Registered trademarks in the U.S., both under national and international procedures, shall be maintained and renewed. This article focuses on maintenance procedures for trademarks registered under the Madrid Protocol.
Section 71 Declaration
To maintain the trademark registered in the U.S. under the Madrid Protocol, the trademark owner must file a Section 71 Declaration with the statement of the trademark use or excusable non-use. Using the trademark registered in the US means use in the territory of the U.S.
If a trademark is used, one specimen per class shall be filed. Additionally, the fee of $225 per class shall be paid.
If a trademark is not used but such non-use is excusable, the trademark owner shall provide details regarding the reasons for nonuse and other required information. §1604.11 of TMEP provides guidelines for reasons that can be excusable. For instance, illness, fire, and other catastrophes may constitute examples of excusable non-use.
If a trademark is used only for some goods or services and is not used for other goods and services and there is no excusable nonuse, a trademark owner can delete goods or services for which the trademark is not registered.
Terms of Filing Section 71 Declaration
– Between 5 and 6 years from the date of issuance by USPTO, the certificate of extension of protection.
– Between 5 and 6 years from the date of issuance by USPTO, the certificate of extension of protection.
– Every ten years from the date of issuance by USPTO, the certificate of extension of protection.
Trademark owners can extend the abovementioned terms for six months. There is a fee of $100 per class for such an extension.
The trademark would be cancelled if the Section 71 Declaration was not filed within the terms mentioned above and the term was not extended.
Combined Section 71 and 15 Declaration
While filing the Section 71 Declaration, it is possible to file the Section 15 Declaration of the incontestability of a trademark. Section 15 Declaration can be filed only when the trademark was used within five consecutive years after registration.
Filing Section 15 Declaration is not obligatory but has some advantages for the trademark owner. Thus, an incontestable trademark is conclusive evidence of the validity of the registered mark, the owner’s ownership of the mark, and the owner’s exclusive right to use the mark with the goods/services.
To file the Section 15 Declaration, the trademark owner must pay $200 per class. By filing Section 15 Declaration, the trademark owner states that there is no pending legal proceeding involving the trademark in the USPTO or a court of law.
Who can file the Section 71 Declaration?
Non-U.S. domiciled trademark registrants must be presented only by a U.S. licensed attorney. The U.S. licensed attorney shall file Section 71 or 15 Declarations regardless of whether the Madrid Protocol filed trademarks.
USPTO Post Registration Audit Program
Under this program, USPTP randomly audits trademark maintenance. If the USPTO audits your trademark, it will require the trademark owner to file proof of use for additional goods and services.
Other Peculiarities of Madrid Protocol Registrations
In contrast to trademark registration by the national procedure, international registration owners cannot amend information regarding ownership by USPTO. Such information can be amended only by WIPO. Also, it is required to renew international registration by WIPO every 10 years.
Section 71 or 15 Declaration filings
If you have any questions or queries about maintaining a trademark or filing a declaration of incontestability, you can reach Ortynska Law at [email protected] or by phone at 9147035632.