For registrations based on the Madrid Protocol
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Step 1. USPTO registers your trademark and issues certificate of extension of protection. After a U.S. registration issues, you must file specific registration maintenance documents and pay fees at regular intervals to keep your registration active. The deadlines for filing Section 71 declarations of use and excusable nonuse are calculated from the registration date shown on the U.S. registration certificate. However, the deadlines for renewing the international registration with the International Bureau of the World Intellectual Property Organization (IB) are calculated from the international registration date. If you don’t file both of these documents, your U.S. registration will be canceled. Go to step 2 for required registration maintenance documents and go to step 2a for optional registration maintenance documents.
Step 2. You file required registration maintenance documents. You must timely file these documents to maintain your registration. Go to step 3.
Step 2a. You file optional registration maintenance documents. You are not required to file any of these documents to maintain a registration. For optional documents that may be filed any time, go to step 3a and for optional documents that may be filed every five years or more go to step 4a.
Step 3. You file your first Section 71 declaration. Before the end of the first six-year period after the registration date, or within six months of the expiration of the sixth year with an additional fee, you must file a Declaration of Use or Excusable Nonuse under Section 71 and pay applicable fees. This declaration must include a verified statement that your trademark is in use in commerce, along with evidence showing that use. If you don’t file this declaration, your registration will be canceled. The USPTO will then notify the International Bureau that your trademark’s protection in the United States is invalidated. Your only options are to file a new application with new fees with the USPTO or file a “Subsequent Designation” with the IB, designating the United States for protection again. The Section 71 declaration may be filed combined with the optional Section 15 declaration of incontestability (see step 4a for more information about this optional filing). Every 10 years go to step 4.
Step 3a. A new owner files a Section 7(d) request for new U.S. registration certificate. The owner of a registered extension of protection to the U.S. may request a new U.S. registration certificate only for the unexpired part of the registration period after filing the appropriate change request with the International Bureau of the World Intellectual Property Organization (IB). Any change in ownership — such as by assignment, transfer, or change of name — must first be recorded at the IB. The IB will notify the USPTO of any ownership changes, including partial changes of ownership of only some of the goods and/or services. After you file the Section 7(d) request and pay the required fee, the USPTO will update its electronic records to reflect the ownership change and issue a new registration certificate. Go to step 3b.
Step 3b. You file a Section 7(e) voluntary surrender of U.S. registration. You may voluntarily surrender your U.S. registration, in its entirety or for a portion of the goods and/or services. No fee is required. Go to step 3c.
Step 3c. You file Sections 7(g) and 7(h) amendment and correction of U.S. registration. You may file a request to amend or correct your U.S. registration at any time, but only in limited circumstances where the change will affect only the extension of protection to the United States. You cannot make any amendments to the trademark or broaden the goods and/or services. A fee is required for amendments and corrections, except for corrections due to USPTO error.
Step 4. You file additional Section 71 declarations periodically. Within one year before the end of every 10-year period after the registration date, or within six months of the end of the 10-year period, you must file a Section 71 declaration and pay applicable fees. This declaration generally must include a verified statement that your trademark is in use in commerce, along with evidence showing that use. If you don’t file this declaration, your registration will be canceled. The USPTO will then notify the IB of the cancellation. Your only options are to file a new application with new fees with the USPTO or file a “Subsequent Designation” with the IB, designating the United States for protection again.
Step 4a. You file Section 15 declaration of incontestability. You may file a Section 15 declaration for a trademark on the Principal Register that has been in continuous use in commerce for a period of five years after the date of the U.S. registration when there is no adverse decision or pending proceeding involving rights in the trademark. “Incontestability” enhances the legal presumptions the U.S. registration receives. This declaration requires a fee.
Step 5. You renew your international trademark registration periodically. In addition to periodically filing the Section 71 declaration with the USPTO in step 4, you must also renew your underlying international registration with the International Bureau every 10 years from the date of international registration. If you do not continue to renew the international registration, the IB will cancel it and notify us to cancel your related U.S. registration.