Trademarks > Keeping a Trademark Registration > Registered Extension of Protection Maintenance Requirements

Registered Extension of Protection Maintenance Requirements
Maintaining a registration originally based on Section 66(a) – Madrid Protocol

The Who, What, How and When of Maintaining a Madrid Protocol Registration with the USPTO

WHO ?	Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79’ series applications, international registrations extended to the U.S) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol.
WHAT ?	Holders must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act. The USPTO will refer to such filings as “Section 71 affidavits.”
HOW ?	Section 71 affidavits will be filed either electronically using a TEAS form or via paper. The contents required are itemized in 15 U.S.C. §1141k(b).
WHEN ?	Affidavits must be filed between the 5th and 6th anniversary dates of the issuance of the certificate of extension of protection (i.e. U.S. registration for a §66(a) application). There is NO grace period. Further affidavits must be filed within the six-month period before the 10th year anniversary or in a 3-month grace period thereafter, with payment of a grace period surcharge.

General Information:

Registrations issued under Section 69, 15 U.S.C. §1141i, will require the submission of an affidavit of continuing use or excusable non-use. An extension of protection remains in force for the term of the international registration on which it is based, but only if the holder also files the required affidavits of continued use (or excusable non-use) under Section 71, 15 U.S.C. §1141k. The contents of such affidavits will consist of a listing of the goods and/or services on or in connection with which the mark is in use in commerce and a specimen or facsimile showing the current use of the mark. If the mark is not currently in use, to avoid cancellation, the affidavit must set forth that such nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.

Examination:

Section 71 affidavits will be examined in the same manner as affidavits presently submitted under Section 8, 15 U.S.C. §1058. The USPTO will notify the holder of the acceptance or refusal of the affidavit, and provide the holder the opportunity to correct any deficiencies found or otherwise respond to issues raised in the course of examination of the affidavits. 37 C.F.R. §§7.37-7.39. Refusals to accept an affidavit may also be the subject of a petition to the Director. 37 C.F.R. §7.40.

Time periods and grace periods:

The Trademark Act and Rules of Practice provide for the following time periods.

On or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States; and

Within the six-month period preceding the end of each ten-year period after the date of registration in the U.S., or in the three-month grace period immediately following, with payment of the grace period surcharge.

The first date of registration of an extension of protection was February 1, 2005. Thus, the first Section 71 affidavits are not permitted to be filed until February 1, 2010.

Methods of Filing:

The Trademark Electronic Application System (TEAS) will be updated to include an electronic form for submission of Section 71 affidavits. Affidavits submitted on paper will also be accepted.

Results of Failure to File:

If a holder fails to file a Section 71 affidavit within the statutorily required time frame, the U.S. Registration will be cancelled. Upon cancellation, the USPTO will notify the International Bureau of the World Intellectual Property Organization (WIPO) of the invalidation or cancellation of protection of the mark in the United States. After notification of invalidation, a holder may seek protection for the same mark in the U.S. by submitting a subsequent designation of the international registration. The subsequent designation may contain all or fewer than all of the goods and services in the international registration. After notification of the subsequent designation to the USPTO, the mark will be examined to determine if the holder is entitled to protection under the U.S. Trademark Act.

For further information about invalidation of an extension of protection and subsequent designation, please review the Guide to the International Registration of Marks under the Madrid Agreement and Madrid Protocol, available on the WIPO website at http://www.wipo.int/madrid/en/guide/index.html.

Renewal of a Registered Extension of Protection:

The holder of a registered extension of protection of an international registration to the United States must renew the international registration with the International Bureau (IB). 37 C.F.R. §7.41(a). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regulations under the Madrid Agreement and Protocol.

The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1) and 7(1). There is a renewal form available on the IB website at http://www.wipo.int/madrid/en/forms/

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