Currently, the United States Patent and Trademark Office (USPTO) issues registrations only under the Trademark Act of 1946, as Amended, 15 U.S.C. §§1051 et seq. These are either Principal Register registrations or Supplemental Register registrations. See TMEP §801.02(a) regarding the Principal Register and §801.02(b) regarding the Supplemental Register.
On May 24, 2022, the USPTO began issuing electronic registration certificates for all registrations resulting from applications based on §§1, 44, and 66(a) of the Trademark Act, 15 U.S.C. §§1051, 1126, 1141f(a). See USPTO To Accelerate Transition To Issuance of Electronic Trademark Registration Certificates; Issuing Next Certificates on May 24, 2022 at 87 Fed. Reg. 31533 (May 24, 2022). On that date, the electronic registration certificate became the official registration certificate.
The registration certificate includes the owner’s name and address, the mark, the goods/services/collective membership organization, and the class(es). The certificate is issued under the electronic signature of the Director and with a digital seal, which authenticates the registration. 15 U.S.C. §§1057(a), 1093; 37 C.F.R. §2.151. The USPTO uploads the electronic registration certificate to the Trademark Status and Document Retrieval database. Trademark owners can view, download, and print a complete copy of the registration certificate at no charge at any time.
Trademark owners can order a one-page, condensed, printed copy of the issued registration that is suitable for framing. This document, known as a "presentation" copy, is printed on heavy paper; features a gold foil seal; identifies the owner(s); indicates the trademark; and specifies the classes of goods and/or services, but does not list the goods and services. Presentation copies are not registration certificates or certified copies of the trademark registration. See USPTO to Begin Issuing Electronic Trademark Registration Certificates at 87 Fed. Reg. 25623 (May 2, 2022). Trademark owners who filed an initial application on or after May 24, 2022 can order a presentation copy of their registration, for a fee, through the Trademark Electronic Application System (TEAS). Trademark owners who filed an initial application before May 24, 2022 can order one presentation copy for free. Id.
See TMEP §111 regarding obtaining a certified copy of the registration from the Patent and Trademark Copy Fulfillment Branch of the USPTO for a fee.
Effective November 2, 2003, §66(a) of the Trademark Act, 15 U.S.C. §1141f(a), permits the holder of an international registration to file a request for extension of protection of the international registration to the United States. See TMEP §§1904-1904.15(c).
Unless the request for extension of protection is refused under §68 of the Trademark Act, 15 U.S.C. §1141h, the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Trademark Official Gazette. Section 69(a) of the Trademark Act, 15 U.S.C. §1141i(a). The certificate of registration will look the same as the certificates issued for registrations resulting from applications based on §§1 and 44 of the Act. From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register. 15 U.S.C. §1141i(b).
Under §66(b), 15 U.S.C. §1141f(b), unless the extension of protection is refused, the proper filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c) of the Trademark Act, 15 U.S.C. §1057(c), as of the earliest of the following:
Upon registration, the USPTO will refer to an extension of protection to the United States as a "registration" or a "registered extension of protection." 37 C.F.R. §7.25(c).
A registered extension of protection remains part of the international registration after registration in the United States. See 15 U.S.C. §1141j, 37 C.F.R. §7.30, and TMEP §1904.08 for information about the dependence of the extension of protection on the underlying international registration. In this respect, the registered extension of protection differs from a registration issuing from a §44 application, which exists independent of the underlying foreign registration, pursuant to §44(f), 15 U.S.C. §1126(f).
See TMEP §1609.01(a) regarding amendment of registered extensions of protection under §7 of the Trademark Act, 15 U.S.C. §1057.
The Act of 1946 became effective on July 5, 1947. Most Acts relating to trademarks that existed prior to the Act of 1946 were repealed as of the effective date of the Act of 1946. Repealed Acts include the Act of 1881, the Act of 1905, the Act of 1920, and the amendment entitled "Act of June 10, 1938." The repeal did not affect the validity of registrations granted under prior Acts. Trademark Act §46(a), 15 U.S.C. §1051 note.
Marks that were registered under any previous Act may be registered again, under the Act of 1946, if the mark meets the requirements of the Act of 1946. Trademark Act §46(b), 15 U.S.C. §1051 note.
However, the USPTO will not issue duplicate registrations for marks that are registered under the Act of 1946. 37 C.F.R. §2.48; see TMEP §703.
Registrations that were issued under the Acts of 1881 and 1905 may be renewed under §9 of the Act of 1946, 15 U.S.C. §1059. These registrations are subject to, and entitled to the benefits of, the provisions of the Act of 1946 as though registered on the Principal Register of the Act, except with certain limitations that are set out in §46(b), 15 U.S.C. §1051 note. Some of these limitations can be removed if the registrant claims the benefits of the Act of 1946 under §12(c), 15 U.S.C. §1062(c). See TMEP §1603.
Marks registered under the "10-year proviso" of §5 of the Act of 1905 are deemed to have become distinctive under §2(f) of the Act of 1946, 15 U.S.C. §1052(f). Trademark Act §46(b), 15 U.S.C. §1051 note.
See TMEP §1602.02 regarding the duration of and requirements for maintaining registrations issued under the Acts of 1881 and 1905.
Registrations under the Act of 1920 are subject to, and entitled to the benefits of, the provisions of the Act of 1946 relating to marks registered on the Supplemental Register, and may not be renewed, unless renewal is required to support a foreign registration. Trademark Act §46(b), 15 U.S.C. §1051 note.
See TMEP §1602.03 regarding the duration of and requirements for maintaining registrations issued under the Act of 1920.
Prior to September 1, 1973, the United States used its own system for the classification of goods and services, which is different from the international classification system. For all registrations issued on the basis of an application filed on or before August 31, 1973, the classification under which the registration issued governs for all statutory purposes, including affidavits or declarations under §8, 15 U.S.C. §1058, and renewal applications under §9, 15 U.S.C. §1059. See 37 C.F.R. §§2.85(b), 2.183(f).
As of September 1, 1973, the international system for classification of goods and services is the controlling classification system used by the United States, and it applies to all applications filed on or after September 1, 1973, and their resulting registrations, for all statutory purposes. See TMEP §1401.02; 37 C.F.R. §2.85(a).
A registrant whose registration issued under the U.S. classification system may voluntarily amend the registration under §7 of the Trademark Act, 15 U.S.C. §1057, to adopt the international classification set forth in the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement"). The registrant must pay the filing fee required for §7 amendments under 37 C.F.R. §2.6. See37 C.F.R. §2.84(e)(3); TMEP §1609.04.
Before August 24, 1920, the name of the Act under which a registration was issued was not designated on the copy of the registration on file in the Trademark Search Library. Beginning with registrations issued on August 24, 1920, each registration includes in the heading either the words "Act of Feb. 20, 1905" or the words "Act of Mar. 19, 1920." The first registrations under the Act of 1920 apparently were issued on August 24, 1920.
Registrations under the Act of 1881 range from Number 8,191, issued on May 17, 1881, through Number 44,357, issued on March 28, 1905. No registrations were issued between March 28, 1905, and July 4, 1905. On July 4, 1905, the first registration under the Act of 1905 was issued as Number 44,358.
The Act of 1946 provides that the certificates of registration for marks registered on the Supplemental Register shall be conspicuously different from certificates issued for marks registered on the Principal Register. Trademark Act §25, 15 U.S.C. §1093. Certificates issued under the 1946 Act are clearly marked either "Principal Register" or "Supplemental Register," with the date the application was filed.
The Trademark Act of 1946, 15 U.S.C. §§1051 et seq., became effective on July 5, 1947, and as of that date the Trademark Acts of 1881, 1905, and 1920 were repealed insofar as they were inconsistent with the Act of 1946. Trademark Act §46(a), 15 U.S.C. §1051 note.
The duration of registrations has varied, depending upon the Act under which the registration was issued. See TMEP §§1602.01, 1602.02, 1602.03, 1614.
Registrations Resulting from Applications Under §1 and §44
The Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935, which took effect on November 16, 1989, amended §9 of the Trademark Act of 1946 to reduce both the duration of registration and the term of renewal from twenty to ten years. All registrations issued or renewed on or after November 16, 1989 are issued or renewed for a ten-year period.
Thus, registrations issued under the Act of 1946 on or after November 16, 1989, remain in force for ten years, provided that affidavits or declarations of use or excusable nonuse under §8 of the Act are filed. 37 C.F.R. §2.181(a)(2). See 37 C.F.R. §2.160(a) and TMEP §1604.04 regarding the due dates for affidavits or declarations of use or excusable nonuse. Registrations issued under the Act of 1946 before November 16, 1989 remain in force for twenty years, provided that an affidavit or declaration of use or excusable nonuse was filed during the sixth year after the date of registration. 37 C.F.R. §2.181(a)(1). See TMEP §§1604-1604.21(d) regarding affidavits or declarations of use under §8 of the 1946 Act.
Effective November 16, 1989, registrations under the Act of 1946 may be renewed for periods of ten years from the end of the expiring period. 37 C.F.R. §2.181(a). Before November 16, 1989, registrations under the Act of 1946 were renewed for twenty-year periods. The applicable term for renewals that were processed during the transition depends on whether the registration was renewed before or after November 16, 1989. If the registration was renewed before November 16, 1989, the renewal term is twenty years; if the registration was renewed on or after November 16, 1989, the renewal term is ten years, regardless of the date on which the renewal application was filed. In re Maytag Corp., 21 USPQ2d 1615 (Comm’r Pats. 1991). See TMEP §§1606-1606.15 regarding renewal under §9 of the 1946 Act.
Registered Extensions of Protection
Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States. Renewal of an international registration and its corresponding extension of protection to the United States must be made at the International Bureau of the World Intellectual Property Organization (IB), in accordance with Article 7 of the Madrid Protocol. 37 C.F.R. §7.41(a). See TMEP §1614 for further information about renewal of international registrations.
Section 71 of the Act, 15 U.S.C. §1141k, requires the periodic filing of affidavits or declarations of use in commerce or excusable nonuse for registered extensions of protection. See TMEP §1613 regarding due dates and requirements for §71 affidavits or declarations.
Registrations under the Act of 1905 were issued for an original term of twenty years, and were renewable for twenty-year periods. Registrations under the Act of 1881 were issued for an original term of thirty years, and were renewable under the Act of 1905 for twenty-year periods.
Effective November 16, 1989, registrations issued under the 1905 Act and the 1881 Act are renewable under the 1946 Act for periods of ten years. Before November 16, 1989, registrations issued under the 1905 Act and the 1881 Act were renewable under the 1946 Act for periods of twenty years. Trademark Act §46(b), 15 U.S.C. §1051 note; 37 C.F.R. §2.181(b).
A registrant under the 1905 Act or the 1881 Act may file an affidavit or declaration under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), to claim the benefits of the 1946 Act, without affecting the term of the registration. See TMEP §1603. Under §8(a)(1) of the 1946 Act, 15 U.S.C. §1058(a)(1), if the registrant claims the benefits of the 1946 Act, the registrant must file an affidavit or declaration of use or excusable nonuse within the sixth year after publication of the notice of the §12(c) claim in the Trademark Official Gazette, to avoid cancellation. See TMEP §§1604-1604.21(d) regarding affidavits or declarations of use or excusable nonuse.
Section 8(a)(2) of the 1946 Act, 15 U.S.C. §1058(a)(2), requires that owners of marks registered under the Acts of 1905 and 1881 file affidavits or declarations of use or excusable nonuse at the end of each successive ten-year period following the date of registration, even if the registrant does not claim the benefits of the 1946 Act under §12(c) of the Act. However, this requirement does not apply to a registration renewed for a twenty-year term (i.e., a registration renewed prior to November 16, 1989) until a renewal application is due. See TMEP §1604.04(b).
The Act of 1920 did not specify any term of registration. However, the Act of 1946 provided that 1920 Act registrations would expire six months after July 5, 1947 (the effective date of the 1946 Act), or twenty years from the date of registration, whichever was later. A 1920 Act registration may not be renewed, unless renewal is required to support a foreign registration. In that instance, the registration may be renewed on the Supplemental Register for a ten‑year period, in the same manner as a registration issued under the 1946 Act. Trademark Act §46(b), 15 U.S.C. §1051 note; 37 C.F.R. §2.181(c). See TMEP §§1606-1606.15 regarding renewal.
The requirement that renewal be necessary to support a foreign registration applies to all renewals of a 1920 Act registration, not just the first renewal. Ex parte U.S. Steel Corp., 157 USPQ 435 (Comm’r Pats. 1968).
The application for renewal of a 1920 Act registration should identify the foreign registration(s) that the renewal is needed to support, the country, the name of the present owner, the registration number, and the date of registration, and must show that the foreign registration(s) is currently in force.
Under §8(a)(2) of the 1946 Act, 15 U.S.C. §1058(a)(2), an affidavit or declaration of use or excusable nonuse under §8 is also required at the end of each successive ten-year period following the date of registration. However, this requirement does not apply to a registration renewed for a twenty-year term (i.e. , a registration renewed prior to November 16, 1989) until a renewal application is due. See TMEP §1604.04(b).
The Trademark Law Treaty Implementation Act of 1998 (TLTIA), Pub. L. No. 105-330, 112 Stat. 3064, changed the requirements for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058 (§8 affidavits), and renewal applications under 15 U.S.C. §1059 (§9 renewal applications), effective October 30, 1999. See Post Registration: Changes to Requirements for Maintaining Trademark Registrations, at 1228 TMOG 187 (Oct. 29, 1999), for a discussion of these changes.
TLTIA did not change the duration of registrations. See TMEP §§1602-1602.04 regarding the term of registrations.
Owners of marks registered under the Acts of 1905 or 1881 may claim the benefits of the Act of 1946, but are not required to do so. Trademark Act §12(c), 15 U.S.C. §1062(c). The 1946 Act refers to a "registrant" claiming the benefits of the Act. The term "registrant" includes both the original registrant and a person who has acquired ownership through proper transfer of title. See15 U.S.C. §1127. The claim must be made by the person who owns the mark at the time the claim is made.
To claim the benefits of the Act of 1946, the owner of the registration must file an affidavit or a declaration under 37 C.F.R. §2.20. The affidavit or declaration must: (1) set forth those items listed in the registration on which the mark is currently in use in commerce; (2) state that the benefits of the Act of 1946 are claimed for the mark; (3) be accompanied by the fee required by 37 C.F.R. §2.6; and (4) be filed by the owner and signed by a person properly authorized to sign on behalf of the owner. 37 C.F.R. §2.153. No specimen is required. Goods or services not listed in the affidavit or declaration will be deleted from the registration. The affidavit or declaration under §12(c) of the Act may be filed at any time during the life of the registration.
A claim of the benefits of the 1946 Act does not affect or alter the term of the 1905 or 1881 Act registration. These registrations still remain in force for the times indicated in TMEP §1602.02, subject to cancellation if acceptable affidavits or declarations of use or excusable nonuse are not filed under 15 U.S.C. §1058. The deadline for renewal (and the affidavit or declaration of use or excusable nonuse required during the year before the end of every ten-year period after the date of the registration) is calculated from the date of issue of the registration, not from the date of publication of the notice of the registrant’s claim of the benefits of the 1946 Act.
If the affidavit or declaration claiming the benefits of the Act of 1946 is acceptable, the mark and accompanying notice of the claim of benefits of the 1946 Act are published in the Trademark Official Gazette under the heading "Registrations Published Under Sec. 12(c)." 37 C.F.R. §2.154. The USPTO notifies the registrant of the publishing of the mark in the Trademark Official Gazette, and also informs the registrant of the requirement for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058. 37 C.F.R. §2.155.
If an affidavit or declaration claiming the benefits of the Act of 1946 is unacceptable, the USPTO notifies the registrant of the defect.
These marks are not subject to opposition on their publication in the Trademark Official Gazette. 37 C.F.R. §2.156.
If the benefits of the Act of 1946 are claimed, registrants under the Acts of 1905 and 1881 may subsequently file affidavits or declarations under §15 of the Act of 1946, 15 U.S.C. §1064, whereby the marks shall be incontestable. See TMEP §§1605-1605.06.
Once the registrant claims the benefits of the Act of 1946, registrations under the 1905 and 1881 Acts are subject to cancellation under §14 of the Act of 1946, 15 U.S.C. §1064. See TMEP §1607.
After the benefits of the Act of 1946 are claimed for a registration issued under the Act of 1881 or the Act of 1905, the registrant must file an affidavit or declaration of use or excusable nonuse during the sixth year after the date of publication of the notice of the registrant’s claim of the benefits of the 1946 Act in the Trademark Official Gazette, or within the six-month grace period after expiration of the sixth year, to avoid cancellation under §8(a)(1) and (a)(3) of the Act. 15 U.S.C. §1058(a)(1), (a)(3). An affidavit or declaration of use or excusable nonuse must also be filed within one year before the end of every ten-year period after the date of the registration, or within the six-month grace period thereafter. 15 U.S.C. §1058(a)(2), (a)(3). See TMEP §§1604-1604.21(d) for further information about affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058.
Under 15 U.S.C. §1058, the owner of a registration must periodically file affidavits or declarations of use or excusable nonuse of the mark. The purpose of the affidavit or declaration of use or excusable nonuse ("§8 affidavit or declaration") is to remove marks that are no longer being used in commerce from the register.
Registered Extensions of Protection Resulting from Applications Under §66(a)
Section 8 of the Trademark Act does not apply to registrations resulting from applications under §66(a) of the Trademark Act; it applies only to registrations resulting from applications under §1 or §44. However, §71 of the Act, 15 U.S.C. §1141k, requires periodic affidavits or declarations of use or excusable nonuse in registered extensions of protection of international registrations to the United States, similar to §8 affidavits or declarations. See TMEP §§1613–1613.21(d) regarding §71 affidavits or declarations.
Six-Year Section 8 Affidavits or Declarations for Registrations Resulting from Applications Under §1 or §44
Under §8(a)(1) and (a)(3) of the Trademark Act, an affidavit or declaration under §8 of the Act is required during the sixth year after the date of registration for registrations issued on either the Principal Register or the Supplemental Register or the date of publication under §12(c) for registrations issued under the Acts of 1881 and 1905 for which the owner has claimed the benefits of the Act of 1946 under §12(c), or within the six-month grace period after expiration of the sixth year. 15 U.S.C. §1058(a)(1), (a)(3); TMEP §1603.03.
Ten-Year Section 8 Affidavits or Declarations Required for All Registrations Resulting from Applications Under §1 or §44
Section 8(a)(2) of the Trademark Act requires an affidavit or declaration of use or excusable nonuse at the end of each successive ten-year period following the date of registration, or within the six-month grace period after the end of the ten-year period. However, the provisions of §8(a)(2) of the Act, requiring the filing of a §8 affidavit or declaration at the end of each successive ten‑year period after registration, do not apply to a registration issued or renewed for a twenty-year term until a renewal application is due. See TMEP §1604.04(b).
A statement noting the requirements for filing the affidavits or declarations of use or excusable nonuse under §8 of the Act (and applications for renewal under §9 of the Act) is included on each certificate of registration as originally issued. 15 U.S.C. §§1058(d), 1059. Additionally, a courtesy email reminder of USPTO maintenance filing deadlines will be sent to a trademark owner's email address with the USPTO (including an email address authorized in an application filed before February 15, 2020). To ensure that the email is received and the correspondence email address is current, owners must use the Trademark Electronic Application System (TEAS) Change Address or Representation Form. The owner must file the affidavit or declaration and application for renewal within the time periods required by §8 and §9 of the Act regardless of whether the owner receives the notice on the registration certificate or in the courtesy email reminder. See 37 C.F.R. §§2.160, 2.162, 2.182. See TMEP §1604.19 for information about combined filings under §8 and §9.
Owners must file the §8 affidavit or declaration through the Trademark Electronic Application System (TEAS), unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions.
See TMEP §1604.04 regarding the deadline for filing the affidavit or declaration, and §1604.05 regarding the requirements for filing the affidavit or declaration.
During the following time periods, the owner of the registration must file an affidavit or declaration of continued use or excusable nonuse, or the registration will be cancelled:
Under §8(a)(1) and (a)(2) of the Trademark Act, the owner of the registration must file an affidavit or declaration of use or excusable nonuse:
37 C.F.R §2.160(a). See TMEP §1604.04(b) regarding registrations in twenty-year terms.
Under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3), the owner may file the affidavit or declaration within a grace period of six months after the expiration of the deadlines set forth in §8(a)(1) and (a)(2) of the Act, 15 U.S.C. §1058(a)(1), (a)(2), with an additional grace period surcharge.
Affidavits or declarations may be filed on the registration anniversary dates at the end of the fifth and sixth years, or at the end of the ninth and tenth years.
Example: For a registration issued on Nov. 1, 2005, a six-year affidavit or declaration may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period.
A §8 affidavit or declaration filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R §2.195(a).
Section 8 affidavits or declarations permitted to be filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed by the due date in accordance with 37 C.F.R. §2.197 or §2.198. See 37 C.F.R §2.195(b)(1)-(2). See TMEP §301.02 regarding the limited exceptions for paper submissions, TMEP §§305.02-305.02(h) regarding certificate of mailing procedures, and §§305.03-305.03(e) regarding Priority Mail Express® procedures.
If the owner of the registration does not file an affidavit or declaration of use or excusable nonuse before the end of the grace period, the registration will be cancelled. 37 C.F.R. §§2.160(a), 2.164(b). Note that the pendency of a cancellation action does not toll the time for filing an affidavit or declaration of use or excusable nonuse. See 37 C.F.R. §2.134(b). See TMEP §1604.07 regarding who may file a §8 affidavit or declaration.
The Director has no authority to waive the deadline for filing a proper affidavit or declaration of use of a registered mark under 15 U.S.C. §1058. See Checkers Drive-In Rests., Inc. v. Comm'r of Patents & Trademarks, 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit, Congress made no exception for the innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case."); In re Mother Tucker's Food Experience (Can.) Inc., 925 F.2d 1402, 1405, 17 USPQ2d 1795, 1798 (Fed. Cir. 1991) ("It was not within the Commissioner's discretionary authority to waive this requirement."); cf. In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) ("Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.").
See TMEP §702.02 regarding requests to make a new application "special" in light of the inadvertent cancellation of a registration for failure to file a §8 affidavit or declaration.
The affidavit or declaration cannot be accepted if it is filed before the time periods specified in §8(a) of the Act. The purpose of the affidavit or declaration is to show that the mark is still in use in commerce within the relevant period, which cannot be done by an affidavit or declaration filed before that period. Cf. In re Holland Am. Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). TEAS does not permit the premature filing of a §8 declaration.
For permitted paper filers. If an affidavit or declaration is filed before the time periods specified in §8(a)(1) and (a)(2) of the Act, the USPTO will issue a notice advising the owner: (1) that the affidavit or declaration is premature; (2) of the appropriate time for filing the affidavit or declaration; (3) that the fee(s) submitted will be held; and (4) that the owner may file a new affidavit or declaration at the appropriate time or may request a refund at any time. See TMEP §301.02 regarding the limited exceptions for paper submissions.
There is no deficiency surcharge. The prematurely filed affidavit or declaration will remain in the record for informational purposes only. The owner of the registration must file a newly executed affidavit or declaration before the end of the grace period, or the registration will be cancelled and the USPTO will refund the fees.
See TMEP §1604.08(b) regarding the date of execution of a §8 affidavit or declaration.
As noted in TMEP §1604.04, §8(a)(2) of the Trademark Act, 15 U.S.C. §1058(a)(2), requires an affidavit or declaration of use or excusable nonuse at the end of each successive ten-year period following the date of registration for all registrations. However, this requirement does not apply to a registration issued or renewed for a twenty-year term (i.e., a registration issued or renewed before November 16, 1989) until a renewal application is due. See 1228 TMOG 187, 189 (Oct. 29, 1999).
Example: If a registration was issued or renewed on November 15, 1989, no §8(a)(2) affidavit or declaration is due between November 15, 1998 and November 15, 1999. Section 8(a)(2) of the Act does not apply until the renewal application is due, i.e., between November 15, 2008 and November 15, 2009.
See TMEP §§1604.06–1604.19 for general requirements for §8 affidavits or declarations of use or excusable nonuse for trademarks or service marks and §§1604.20–1604.21(d) for additional requirements for §8 affidavits or declarations for collective marks and certification marks. See TMEP §§1613.06–1613.19 for general requirements for §71 affidavits or declarations of use or excusable nonuse for trademarks or service marks and §§1613.20–1613.21(d) for additional requirements for §71 affidavits or declarations for collective marks and certification marks.
Under 15 U.S.C. §1058(b) and 37 C.F.R §2.161(a)(4)(i), an affidavit or declaration of use or excusable nonuse must include the fee required by 37 C.F.R. §2.6 for each class that the affidavit or declaration covers. See TMEP §§1401.02, 1401.04-1401.04(b), and §1601.06 regarding use of international classification or prior U.S. classification to calculate fees due.
If the affidavit or declaration is filed during the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3), it must include the grace period surcharge per class required by 37 C.F.R. §2.6.
Section 8(c) of the Trademark Act, 15 U.S.C. §1058(c), requires a "deficiency surcharge" for correcting deficiencies in the affidavit or declaration after expiration of the deadlines specified in §8. See TMEP §§1604.17-1604.17(c) regarding the deadlines and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one §8 affidavit or declaration, or one combined filing under §8 and §9. See TMEP §1604.19 regarding combined filings under §8 and §9.
The grace period surcharge applies only where no filing was made during the sixth year after the date of registration (or date of publication under §12(c) of the Act), or within the year before the end of any ten-year period after the date of registration. An owner who files within these periods, but corrects a deficiency after these periods have expired, will be subject to the deficiency surcharge only. On the other hand, someone who files during the grace period and cures deficiencies after expiration of the grace period will be subject to both the grace period surcharge (for the ability to file the affidavit or declaration during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the end of the grace period). H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).
An affidavit or declaration that does not include a fee, or does not include sufficient fees for all the classes to which the affidavit or declaration pertains (and the grace period surcharge, where applicable), is deficient. Fee deficiencies may be cured before expiration of the deadlines set forth in §8 of the Act, 15 U.S.C. §1058, without payment of a deficiency surcharge, or after expiration of the deadlines set forth in §8 of the Act with the deficiency surcharge required by §8(c) of the Act. See TMEP §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the affidavit or declaration was filed without sufficient fee(s), but the affidavit or declaration included an authorization to charge deficient fees to a USPTO deposit account (37 C.F.R. §2.208), the required fee(s) (and grace period surcharge, where applicable) will be charged to the deposit account. If the deposit account authorization was included with the affidavit or declaration as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.
An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.
If a check submitted with a permitted paper filing (see TMEP §301.01) as payment of a filing fee for an affidavit or declaration of use or excusable nonuse is returned unpaid, or an electronic funds transfer (EFT) or credit card payment is refused or charged back by a financial institution, this is regarded as a deficiency. In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused. 37 C.F.R. §2.6(b)(10). See TMEP §405.06 for additional information.
If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes and the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue an Office action requiring either (1) submission of the additional fee(s) or (2) specification of the class(es) to which the initial fee(s) should be applied. 37 C.F.R §2.161(a)(4)(iii). If the owner does not respond within the time period set out in the Office action by submitting the additional fee(s) or specifying the class(es) to which the original fee(s) should be applied, the USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class and will delete any unpaid class(es). Id. See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §8 affidavit or declaration.
The affidavit or declaration of use or excusable nonuse must be filed by the owner of the registration. Filing by the owner is a minimum requirement that must be met before the expiration of the deadlines set forth in §8(a) of the Act, 15 U.S.C. §1058(a), (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within the year before the end of every ten-year period after the date of registration), or within the six-month grace period after expiration of these deadlines. 37 C.F.R. §§2.160(a), 2.161(a)(1).
If it is unclear whether the party who filed the affidavit or declaration is the present owner, the Post Registration staff will issue an Office action requiring the party to establish its ownership. If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, the owner may file evidence to establish ownership, even if the filing period set forth in §8 of the Act has expired. There is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership. See TMEP §1604.07(b).
If the affidavit or declaration was not filed in the name of the owner of the registration, and there is time remaining in the statutory filing period (which includes the grace period), the true owner may (1) submit, in response to an Office action, a correction of the name in the filing of record or (2) file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §2.6, and, if applicable, a specimen of use for each class. If a new affidavit or declaration is filed during the grace period, the owner must include the grace period surcharge per class with the new affidavit or declaration. If a correction is submitted, the owner must also confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner. 37 C.F.R. §2.193(e)(1); TMEP §1604.08(a). If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration. See 37 C.F.R §2.161(a)(2), 2.193(e)(1).
If the affidavit or declaration was not filed in the name of the owner of the registration, and there is no time remaining in the grace period, the deficiency may be corrected within a prescribed time. 15 U.S.C. §1058(c). The Post Registration staff will issue an Office action notifying the party who filed the affidavit or declaration of the ownership issue and of the time period within which it must be corrected. The true owner may submit a correction to the filing of record within the prescribed time and must also include the deficiency surcharge. 37 C.F.R. §2.6(a)(20). If a correction is submitted, the owner must also verify that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true owner. 37 C.F.R. §2.193(e)(1); TMEP §1604.08(a). If the original affidavit or declaration was not signed by an authorized signatory, the owner must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the owner, that affirms the representations in the original affidavit or declaration. 37 C.F.R §2.161(a)(2).
See also TMEP §1604.07(f) regarding mistakes in setting forth the name of the owner.
When the affidavit or declaration is filed by someone other than the original owner of the registration, the USPTO cannot accept the affidavit or declaration unless there is a clear chain of title from the original owner to the party who filed the affidavit or declaration. 37 C.F.R. §3.73(b); TMEP §502.01.
When the affidavit or declaration is filed, the Post Registration staff will check the records of the Assignment Recordation Branch of the USPTO, available at https://assignment.uspto.gov/trademark/index.html#/trademark/search. If the records of the Assignment Recordation Branch show a clear chain of title in the party who filed the affidavit or declaration, no inquiry will be issued. The Post Registration staff will enter the change of ownership into the automated records of the Trademark Operation, if necessary.
If the records of the Assignment Recordation Branch do not show a clear chain of title in the party who filed the affidavit or declaration, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration. To establish ownership, the party must: (1) record documents in the Assignment Recordation Branch of the USPTO that show each change of ownership, and include a statement in the response to the Office action that the documents have been recorded; or (2) submit documentary evidence of a chain of title from the original owner to the party who filed the affidavit or declaration. 37 C.F.R. §3.73(b)(1); TMEP §502.01.
"Documentary evidence of a chain of title from the original owner to the assignee" (37 C.F.R. §3.73(b)(1)(i) ) normally consists of the same type of documents that would be recorded in the Assignment Recordation Branch, e.g., assignment documents, certificates of merger, or certificates of change of name. In the alternative, an affidavit or declaration containing sufficient facts to support the transfer of title may be accepted.
The owner may submit evidence of ownership even if the filing period set forth in §8 of the Act has expired. If the party who filed the affidavit or declaration was the owner of the registration at the time of filing, there is no deficiency, and no deficiency surcharge is required for providing evidence to establish ownership.
See TMEP §1604.07(a) regarding an affidavit or declaration filed by a party who was not the owner of the registration at the time of filing.
The notification of acceptance of a §8 affidavit or declaration is issued in the name of the owner of record, as shown in the Trademark database.
When a party other than the original owner files a §8 affidavit or declaration, the USPTO will accept the affidavit or declaration if the new owner submits documentary evidence of the chain of title (see TMEP §1604.07(b)), even if the new owner does not record the documents of ownership in the Assignment Recordation Branch. 37 C.F.R. §3.73. However, the USPTO will not issue the notice of acceptance of the §8 affidavit or declaration in the name of the new owner unless the new owner: (1) records the appropriate document in the Assignment Recordation Branch; and (2) notifies the Post Registration staff that the document has been recorded. 37 C.F.R. §3.85.
See TMEP §§504-504.04 regarding the circumstances in which the "Ownership" field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Post Registration staff that the document has been recorded. See also TMEP §505.02 regarding requests to update ownership information after registration, §609.02(f) regarding correspondence after recordation of a change of ownership, §502.01 regarding establishing ownership of a registration, and §502.03 regarding issuance of a new certificate in the name of a new owner.
The procedures for establishing ownership, as discussed in TMEP §1604.07(b), also apply to changes of name and changes of legal entity. See TMEP §1604.07(e) regarding changes of name.
A change in the state of incorporation is a change of legal entity, creating a new party.
The death of a partner, or other change in the membership of a partnership, creates a change in legal entity unless the partnership agreement provides for continuation of the partnership and the relevant state law permits this.
A merger of companies into a new company normally constitutes a change of legal entity.
Affidavits or declarations may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person’s authority to act on behalf of the present owner. If there is a court order, a copy of the order should be submitted.
A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §8 affidavit or declaration. Therefore, if the owner records a change of name with the Assignment Recordation Branch and subsequently files the §8 affidavit or declaration in its former name, the USPTO will not issue an inquiry regarding ownership.
However, if it is unclear from the records of the Assignment Recordation Branch whether the party who filed the affidavit or declaration is the owner of record, the owner must either record evidence of the change of name in the Assignment Recordation Branch or submit proof of the change of name. See 37 C.F.R. §3.73(b); TMEP §1604.07(b). For a corporation, this is done by recording or submitting a certificate of change of name issued by the Secretary of State (or other authorized body) of the state of incorporation.
See TMEP §1604.07(c) regarding issuance of the notice of acceptance of the affidavit or declaration in the name of the new owner.
If the affidavit or declaration was filed by the owner of the registration, but there is a mistake in the manner in which the name of the owner is set out, the mistake can be corrected. In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm’r Pats. 1990). No deficiency surcharge is required in this situation.
See TMEP §1604.07(a) regarding an affidavit or declaration mistakenly filed in the name of a person or existing legal entity who did not own the mark as of the filing date.
See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
See TMEP §611.03(a) regarding who may sign the affidavit or declaration. Generally, the USPTO does not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §611.03(a).
Under 37 C.F.R §2.161(a)(2), the verified statement must be executed on or after the beginning of the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058, (i.e., on or after the fifth anniversary of the date of registration or publication under §12(c), on or after the beginning of the one-year period before the end of each ten-year period after the date of registration, or during the available grace period). Because the purpose of the affidavit or declaration is to attest to the use or excusable nonuse of the mark within the time periods specified in §8 of the Act, the affidavit or declaration cannot be executed before these time periods begin.
An affidavit or declaration filed within the period specified in §8 of the Act, but executed before that period, is deficient. The owner of the registration will be required to submit a substitute or supplemental affidavit or declaration attesting to use in commerce (or excusable nonuse) on or in connection with the goods/services/collective membership organization within the relevant period specified in §8 of the Act.
If the prematurely executed §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act. If the prematurely executed §8 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations and §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
Date of Execution Omitted. If the §8 affidavit or declaration is signed, but the date of execution is omitted, the Post Registration staff must require that the owner of the registration set forth the date of execution for the record. If the affidavit or declaration was executed within the relevant filing period, no deficiency fee is required. If there are no other outstanding issues, the owner may provide the Post Registration staff with the date by telephone or email and the Post Registration staff must enter a Note to the File in the record. If the affidavit or declaration was not executed within the relevant filing period, the affidavit or declaration is deficient, and the owner must submit a substitute or supplemental affidavit or declaration, as discussed above.
See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of an affidavit or declaration filed through TEAS.
The format of the verification may be: (1) the classical form for verifying, which includes an oath (jurat) (see TMEP §804.01(a)); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath (see TMEP §804.01(b)). See 37 C.F.R. §2.2(n).
Under 15 U.S.C. §1058(b) and 37 C.F.R §2.161(a)(5)(i), the affidavit or declaration must specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce and/or the goods, services, or nature of the collective membership organization for which excusable nonuse is claimed. See §1604.10 regarding use in commerce, and TMEP §1604.11 regarding excusable nonuse. The affidavit or declaration may incorporate by reference the identification set forth in the registration certificate (e.g., "all goods/all services/or the nature of the collective membership organization listed in the existing registration" or "all goods/services/classes listed in the registration except . . . [specifying the goods/services/classes not covered by the affidavit or declaration]"). Incorporation by reference is recommended, to avoid inadvertent omissions.
If the owner is alleging use with respect to some of the goods/services/classes and excusable nonuse for other goods/services/classes, the owner must clearly indicate which goods/services/classes are in use and which goods/services/classes are not in use.
If the owner of the registration intends to delete goods/services/classes from the registration, this should be expressly stated in the affidavit or declaration. 37 C.F.R §2.161(a)(5)(ii). Once an owner expressly indicates an intention to delete goods, services, or classes from a registration, they may not be reinserted. For example, reinsertion is prohibited after the owner submits a TEAS §8 form indicating that certain goods, services, or classes are to be deleted, as the form states that the filing does not cover the deleted goods, services, or classes and that they are to be permanently deleted from the registration.
If the owner of the registration deletes goods/services/classes from the registration after submission and prior to acceptance of the §8 affidavit or declaration, the owner must pay the relevant per class fee in 37 C.F.R §2.6(a)(12). 37 C.F.R §2.161(c).
An affidavit or declaration that fails to list or incorporate by reference all goods/services/or the nature of the collective membership organization listed in the registration, and does not include a statement of intent to delete the omitted goods/services/classes, is deficient. In such case, the Post Registration staff will issue an Office action requiring the party to either (1) file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services/collective membership organization or (2) state that the omitted goods/services/classes should be deleted.
If the owner files a substitute or supplemental affidavit or declaration adding the omitted goods/services/collective membership organization, the owner must verify that the mark was in use in commerce on or in connection with the goods/services/collective membership organization during the relevant filing period specified in §8 of the Act, 15 U.S.C. §1058. This substitute affidavit or declaration may be filed before expiration of the relevant deadline set forth in §8 of the Act for no fee, or after expiration of the deadline set forth in §8 of the Act with the deficiency surcharge required by §8(c) of the Act. See TMEP §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the owner does not file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services/collective membership organization within the period for response to the Office action (see TMEP §1604.16), the omitted goods/services/classes will be deleted from the registration.
Goods and/or services that are not listed in the registration may not be set forth in the §8 affidavit or declaration.
The §8 affidavit or declaration must state that the mark is in use in commerce, unless excusable nonuse is claimed. 37 C.F.R §2.161(a)(6)(i). See TMEP §1604.11 regarding excusable nonuse. The use in commerce requirement may be satisfied if the mark has not been abandoned and the use meets the statutory definition of "use in commerce," i.e., bona fide use in the ordinary course of trade, and not made merely to reserve a right in the mark. 15 U.S.C. §1127. The §8 affidavit or declaration does not have to specify the type of commerce (e.g., interstate) in which the mark is used. The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the U.S. Congress can regulate, unless there is contradictory evidence in the record.
A §8 affidavit or declaration that does not state that the mark is in use in commerce is deficient. The owner must submit a substitute affidavit or declaration stating that the mark was in use in commerce on or in connection with the goods, services, and/or collective membership organization identified in the registration during the relevant period specified in §8 of the Trademark Act, 15 U.S.C. §1058, as follows:
If the §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Act, or within one year before the end of any ten-year period after the date of registration), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act. If the §8 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations and §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
While a substitute affidavit or declaration may be filed after the expiration of the period specified in §8 of the Act, the substitute affidavit or declaration must attest to use within the time period specified in §8 of the Act. Therefore, if the substitute affidavit or declaration does not state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization within the relevant period specified in §8 of the Act, the USPTO will not accept the §8 affidavit or declaration, and the registration will be cancelled.
. . .
The purpose of Section 8 of the Trademark Act is to remove from the register those registrations that have become deadwood. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969) . It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the owner of the registration. In re Moorman Mfg. Co.,203 USPQ 712 (Comm’r Pats. 1979). Thus, if the mark is not in use in commerce but the owner believes the registration should not be cancelled, the owner may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark. 15 U.S.C. §1058(b)(2); Ex parte Kelley-How-Thomson Co., 118 USPQ 40 (Comm’r Pats. 1958).
Requirements for Affidavit or Declaration
Because Section 8(b)(2)(B) of the Act provides that the affidavit "shall … include a showing"―language that implies proof―merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient. In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993); In re Moorman Mfg. Co., 203 USPQ at 712; Ex parte Astra Pharm. Prods., Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chem. Mfg. Co., 118 USPQ 106 (Comm'r Pats. 1958). Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the owner’s control or "forced by outside causes." In re Conusa Corp., 32 USPQ2d at 1857; In re Moorman Mfg. Co., 203 USPQ at 712; Ex parte Kelley-How-Thomson Co., 118 USPQ at 40.
The affidavit or declaration must state when use in commerce stopped and give the approximate date when use is expected to resume. 37 C.F.R §2.161(a)(6)(ii). If the mark was registered under §44(e) and the owner was unable to commence use due to special circumstances beyond the owner’s control that excuse the nonuse, the owner should state that the mark was never in use and give the approximate date when use is expected to begin. Affidavits or declarations should also specify the reason for nonuse, the specific steps being taken to put the mark back in use, and any other relevant facts to support a finding of excusable nonuse.
The goods/services/classes for which excusable nonuse is claimed must be specified. See TMEP §§1604.09-1604.09(d) regarding proper specification of the goods/services/collective membership organization in a §8 affidavit or declaration.
In a multiple-class registration, there must be a recitation of facts as to nonuse for each class to which the affidavit or declaration pertains, or it must be clear that the facts recited apply to all the classes.
Presumption of Abandonment
If the mark has not been in use for three consecutive years and the owner has done nothing to try to resume use of the mark, the USPTO may presume that the owner has abandoned the mark. 15 U.S.C. §1127; see Imperial Tobacco Ltd. v. Phillip Morris Inc., 899 F.2d 1575, 1579-81, 14 USPQ2d 1390, 1393-94 (Fed. Cir. 1990); Vans, Inc. v. Branded, LLC, 2022 USPQ2d 742, at *19-20 (TTAB 2022); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, at *11 (TTAB 2019); Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1018 (TTAB 2018); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1533 (TTAB 2018).
Examples of Special Circumstances that Do and Do Not Excuse Nonuse
In addition to a showing that there is no intention to abandon the mark, the owner must show that nonuse is due to special circumstances beyond the owner's control that excuse nonuse. The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:
Supplementary Evidence or Explanation of Nonuse
If the USPTO determines that the facts set forth do not establish excusable nonuse, the owner may file supplementary evidence or explanation, within the response period set forth in the Office action. If the affidavit or declaration included a claim of excusable nonuse when filed, no deficiency surcharge will be required for supplementing this claim with additional evidence or an explanation.
New Affidavit or Declaration Claiming Use
If there is time remaining in the statutory filing period (including the grace period) and the owner responds to the Office action by submitting a new affidavit or declaration with a claim of use, specimen, and filing fee, the USPTO will examine the new affidavit or declaration of use.
A §8 affidavit or declaration must include a specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed. 15 U.S.C. §1058(b); 37 C.F.R §2.161(a)(7). When requested by the USPTO, additional specimens must be provided. 37 C.F.R §2.161(a)(7).
The specimen must show use of the mark within the time period specified in §8 of the Act. If the specimen does not show use of the mark within the time period specified in §8, it is unacceptable to show current use of the mark in commerce. An affidavit or declaration that does not include a specimen that shows current use of the mark in commerce is deficient. See 15 U.S.C §1058(b).
See TMEP §904.03-904.04(c) regarding trademark specimens, §1301.04-1301.04(j) regarding service mark specimens, §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, §1304.02(a)(i)(C) regarding specimens for collective membership marks, and §1306.02(a)(i)(B) regarding specimens for certification marks.
The specimen must show use of essentially the same mark as the mark shown in the registration, and must show the mark as actually used in commerce on or in connection with the goods/services/classes listed in the registration. 37 C.F.R §2.56(a). A specimen that shows use of a materially different mark (see TMEP §1604.13), or shows use of the mark on other goods/services/classes, is unacceptable. An affidavit or declaration that does not include an acceptable specimen for each class is deficient. See 37 C.F.R §2.161(a)(7).
If a single specimen supports multiple classes, the owner should so indicate, and the Post Registration staff need not require additional copies of the specimen. The Post Registration staff should enter a Note to the File in the record indicating which classes the specimen supports.
If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services/classes during the relevant period specified in §8 of the Act. See 37 C.F.R. §2.164. See TMEP §1604.12(c) regarding substitute specimens.
The USPTO will not return specimens.
See TMEP §904.02(a) and §1604.12(b) regarding electronically filed specimens and §904.02(b) regarding permitted paper-filed specimens.
Under 37 C.F.R §2.56(d), the specimen must generally be submitted through TEAS in a file format that is designated acceptable by the USPTO. See TMEP §904.02(a) for more information regarding electronically filed specimens.
Sometimes, no visible specimen is in the record due to a technical problem during submission of the affidavit or declaration. In this situation, the Post Registration staff should first send an email to the TEAS mailbox to ask whether the problem can be fixed by uploading the file again. If it cannot, the Post Registration staff must ask the owner to submit: (1) the specimen (or an exact copy of the specimen) that was attached to the original electronically filed affidavit or declaration; and (2) a statement by the person who transmitted the affidavit or declaration to the USPTO that the specimen being submitted is a true copy of the specimen submitted with the electronically filed affidavit or declaration. This statement does not have to be verified. Alternatively, the owner may submit a new specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services during the relevant period specified in §8 of the Act. No deficiency surcharge is required. See TMEP §1604.12(c) regarding the requirements for an affidavit or declaration supporting use of substitute specimens.
If a specimen for any class is omitted or is deficient, the owner must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §8 of the Act, 15 U.S.C. §1058, as follows:
If the §8 affidavit or declaration was filed during the relevant period specified in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), the substitute specimen may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §8(c) of the Act. If the §8 affidavit or declaration was filed during the grace period, the substitute specimen may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1604.04 regarding the deadlines for filing §8 affidavits or declarations, and §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
While a substitute specimen and supporting affidavit or declaration may be filed after the expiration of the period specified in §8 of the Act, the supporting affidavit or declaration must attest to use of the specimen within the time period specified in §8 of the Act. Therefore, if the affidavit or declaration supporting the substitute specimen does not state that the specimen was in use in commerce prior to the end of the relevant period specified in §8 of the Act, the USPTO will not accept the affidavit or declaration, and the registration will be cancelled as to any class for which no proper specimen was submitted.
See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding the proper person to sign an affidavit or declaration.
The mark to which the §8 affidavit or declaration pertains must be essentially the same as the mark that appears in the registration. Where the specimen reflects a change in the mark since the registration issued, acceptance of the affidavit or declaration will depend on the degree of change. A material alteration of the mark will result in refusal of the affidavit or declaration on the ground that the registered mark is no longer in use. In re Int’l Nickel Co., 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Cont'l Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967); see also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); In re Holland Am. Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).
Mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953) (change in matter determined to be mere background and type face held not a material alteration of "PETER PAN" mark). However, each case must be decided on its own facts, and these general rules are subject to exceptions. The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d at 1370, 116 USPQ2d at 1133-34 (holding minor adjustment to the font and alterations to the design element of registered mark insufficient to change the commercial impression created by the mark).
Generally, the standard used to determine whether a change is material under §8 is the same as the standard used to determine whether the mark in a registration may be amended under 15 U.S.C. §1057(e). If the mark could be amended under §7(e) because the character of the mark had not been materially altered, then the specimen filed with the §8 affidavit or declaration should be accepted. In determining whether a change constitutes a material alteration, the USPTO will always compare the mark in the specimen to the mark as originally registered. See TMEP §§807.14-807.14(f) and §1609.02(a) for additional information about material alteration.
However, where the registered mark is currently used as one of several elements in a composite mark, the decision as to whether to accept the specimen requires consideration of whether the registered mark makes an impression apart from the other elements of the composite mark. If the display of the composite is such that the essence of the registered mark makes a separate impression, then the specimen may be sufficient for purposes of the §8 requirement. In many cases, word elements are severable from design elements, because words tend to dominate in forming a commercial impression. In re DeWitt Int’l Corp., 21 USPQ2d 1620 (Comm’r Pats. 1991). If the mark, as used on the §8 specimen, creates a separate impression apart from any other material on the specimen, then the specimen may be accepted as evidence of current use of the registered mark.
If the USPTO determines that the mark on the specimen is a material alteration of the registered mark, the owner may file a substitute specimen. If the owner files a substitute specimen after expiration of the relevant filing period specified in §8 of the Act, the owner must pay the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c), and 37 C.F.R. §2.6. See TMEP §1604.12(c) regarding substitute specimens, and 37 C.F.R. §2.164 and TMEP §§1604.17-1604.17(c) regarding the procedures for correcting deficiencies in a §8 affidavit or declaration.
If the USPTO accepts the §8 affidavit or declaration, and there is a difference between the mark on the specimen filed with the affidavit or declaration and the mark in the registration, the mark as originally registered remains the mark of record. If the owner wants to change the mark in the registration to agree with the mark currently used, the owner must file a separate request for amendment under §7(e) of the Act, 15 U.S.C. §1057(e), and pay the fee required by 37 C.F.R. §2.6. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953). See TMEP §§1609.02-1609.02(g) regarding amendment of a registered mark under §7(e).
However, amending the mark in a registration under §7(e) to agree with the mark as shown on a §8 specimen is not mandatory.
An owner that is not domiciled in the United States may file a document designating the name, email address, and postal address of a person residing in the United States on whom notices or process in proceedings affecting the mark may be served. 15 U.S.C §1058(f); 37 C.F.R §2.24(a)-(b). The mere designation of a domestic representative, however, does not authorize the person designated to represent the owner. 37 C.F.R §2.24(c). See TMEP §610 for more information regarding designating a domestic representative.
Upon receipt of a §8 affidavit or declaration, the USPTO updates the prosecution history of the registration in the Trademark database to indicate that the affidavit or declaration has been filed.
TEAS almost immediately displays a "Success" page that confirms receipt. TMEP §303.02(a). This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information.
If a §8 affidavit or declaration is permitted to be filed on paper (see TMEP §301.01), no acknowledgment of receipt of the affidavit or declaration is sent before it is examined, unless the owner includes a stamped, self-addressed postcard with the affidavit or declaration (see TMEP §303.02(c)).
If, upon examination, the USPTO determines that the affidavit or declaration is acceptable, the USPTO issues a notice of acceptance. If the affidavit or declaration is not acceptable, the USPTO issues an Office action stating the reasons for refusal. 37 C.F.R. §2.163.
Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the affidavit or declaration. In such cases, the USPTO will require the owner to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §8 affidavit or declaration. 37 C.F.R §2.161(b).
The propriety of the original registration is not re-examined in connection with the affidavit or declaration under §8.
Deadline. Under 37 C.F.R. §2.163(b), the owner must file a response to a refusal within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) of the Act, whichever is later. If no response is received within that time, the registration will be cancelled, unless time remains in the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3). If time remains in the grace period, the owner may file a complete new affidavit or declaration, with a new fee.
The owner may file a petition to the Director under 37 C.F.R. §2.146(a)(5) and §2.148 to waive 37 C.F.R. §2.163(b) so that a late response to an Office action may be accepted. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. See TMEP §1708. The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.163(b). See TMEP §1712.02(b). The "unintentional delay" standard of 37 C.F.R. §2.66 does not apply to the failure to respond to an Office action issued in connection with a §8 affidavit or declaration. TMEP §1714.01(f)(ii)(D).
TEAS Response Required. The owner must file a response using the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form at https://teas.uspto.gov, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); TMEP §301.01. See TMEP §301.02 for the limited exceptions for paper submissions.
Signature. The response must be properly signed in accordance with the guidelines in TMEP §611.03(b). See TMEP §§611.06-611.06(h) for persons with legal authority to bind various types of juristic entities and §§602-602.03(c) regarding persons qualified to represent others before the USPTO in trademark cases.
When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must follow the procedures in TMEP §§611.05-611.05(c).
Correction of Deficiencies. See TMEP §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the affidavit or declaration is filed during the periods set forth in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Act, or within one year before the end of any ten-year period after the date of registration), deficiencies may be corrected, after notification from the Office, within the relevant period without paying a deficiency surcharge, or after the expiration of the relevant period with payment of the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c).
Any deficiency must be cured before the end of the relevant filing period set forth in §8 of the Act or within the set period for response to the Office action, whichever is later. 15 U.S.C. §1058(c). If no response is filed, or if the owner does not correct the deficient affidavit or declaration, within this time period, the registration will be cancelled, unless time remains in the grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3). If time remains in the grace period, the owner may file a complete new affidavit or declaration, with a new fee. See TMEP §1604.16.
If the affidavit or declaration is filed during the six-month grace period under §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3), deficiencies may be corrected, after notification from the Office, before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c).
Deficiencies must be cured within six months of the issuance date of the Office action. 37 C.F.R. §2.163(b); see TMEP §1604.16.
The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed within the time period set forth in §8 of the Act (including the grace period). 15 U.S.C. §1058(a). Untimely filing cannot be cured after expiration of the grace period, even with a deficiency surcharge. See TMEP §1604.04 regarding the deadline for filing the affidavit or declaration.
The action of the Post Registration staff on a §8 affidavit or declaration may not be appealed to the Trademark Trial and Appeal Board, but the owner may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 2.165(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c). See TMEP §§1705–1705.09 regarding petition procedure.
A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. 37 C.F.R. §2.165(a).
If the Post Registration staff continues the refusal to accept the affidavit or declaration, the owner may file a petition for review of the action under 37 C.F.R. §2.146(a)(2) within six months of the issuance date of the action continuing the refusal. See TMEP §1705.04. If the owner does not file a petition within six months, the registration will be cancelled. 37 C.F.R. §2.165(b).
The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration (see TMEP §1604.18(c)), or an appeal to an appropriate court (see TMEP §1604.18(d)) within two months of the issuance date of the decision on petition, the registration will be cancelled.
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid with the request for reconsideration. See TMEP §1705.08 regarding requests for reconsideration of petition decisions.
The owner of the registration may appeal to the U.S. Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition. 15 U.S.C. §1071(a)(1), (b)(1); 37 C.F.R. §2.145(a), (c).
The deadline for filing an appeal or commencing a civil action is 63 days from the issuance date of the decision on petition. 15 U.S.C. §1071(a)(2), (b)(1); 37 C.F.R. §2.145(d)(1), (d)(3).
Under 37 C.F.R. §2.165(c), a decision on petition is necessary before the owner can file an appeal or commence a civil action in any court.
A §8 affidavit or declaration and a §9 renewal application may be combined into a single document, if the document meets the requirements of both §8 and §9 of the Act. 37 C.F.R. §2.166.
The filing fee for the combined §8 and §9 filing is the sum of the cost of the individual filings. If the combined §8 and §9 document is filed during the grace period, the filing fees per class and the grace period surcharge per class must be paid for both the §8 affidavit or declaration and the §9 renewal application.
Example: The period for filing a §8 affidavit or declaration and §9 renewal application expires on November 19, 2009. A combined §8 and §9 document is filed November 21, 2009, during the six-month grace period. The proper fees are as follows: (1) filing fee for the §8 affidavit or declaration, per class; (2) grace period surcharge for the §8 affidavit or declaration, per class; (3) filing fee for the §9 renewal application, per class; and (4) grace period surcharge for the §9 renewal application, per class.
Failure to include the proper fees is a deficiency that may require a deficiency surcharge. See TMEP §§1604.17-1604.17(c) and §§1606.13-1606.13(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for curing one or more deficiencies in a combined §8 and §9 filing, even if both the §8 affidavit or declaration and the §9 renewal application are deficient. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one document.
The combined §8 and §9 filing must be submitted through TEAS, at https://teas.uspto.gov, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R. §2.23(a); TMEP §301.01. TEAS almost immediately displays a "Success" page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information.
See TMEP §1605.05 regarding a combined filing under §8 and §15 of the Act.
In addition to the requirements specified in 37 C.F.R. §2.161(a)(1)-(7) and TMEP §§1604.06–1604.19, a complete §8 affidavit or declaration pertaining to a collective trademark, collective service mark, or collective membership mark for which use in commerce is claimed must include:
If use in commerce is claimed, the owner must submit a verified statement that the owner is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R. §2.161(a)(8)(i). If this verified statement is not filed with the original affidavit or declaration, it must also allege that the owner was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the §8 affidavit or declaration. See 37 C.F.R. §2.161(a)(2), (a)(8)(i).
If the registration issued from an application based solely on §44 of the Act, the owner must state the nature of the owner’s control over the use of the mark by the members, in the first §8 affidavit or declaration of use that is filed with the USPTO. 37 C.F.R. §2.161(a)(8)(ii). A statement that the owner’s bylaws or other written provisions specify the manner of control is sufficient to satisfy this requirement.
The following language may be used for the above purpose:
The owner controls the members’ use of the mark in the following manner: [specify, e.g., the owner’s bylaws specify the manner of control].
In addition to the requirements specified in 37 C.F.R. §2.161(a)(1)-(7) and TMEP §§1604.06–1604.19, a complete §8 affidavit or declaration pertaining to a certification mark for which use in commerce is claimed must include:
Submitting certification standards for the first time. If the registration issued from an application based solely on §44 of the Act, the owner must include a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services, in the first §8 affidavit or declaration of use that is filed with the USPTO. 37 C.F.R §2.161(a)(9)(i)(A).
The standards do not have to be originally created by the owner. They may be standards established by another party, such as specifications promulgated by a government agency or standards developed through research of a private research organization.
The standards must cover the full scope of the goods/services identified in the registration. For example, if the goods are "olive oil," but the standards are only for "extra virgin olive oil," the USPTO must require the owner to submit standards that cover all types of olive oil or to amend the identification to "extra virgin olive oil."
In the rare circumstance when it is impracticable to provide a copy of the standards, the USPTO may accept a permanent link or permanent URL to the owner’s standards with a synopsis of those standards. This provision is not intended as a general alternative for providing a copy of the standards; it applies only to situations when the nature of the standards makes providing a copy impracticable. For example, it may be impracticable to include a copy of the standards if the standards exceed 1,000 or more pages.
Certification standards submitted in prior filing. If the certification standards in use at the time of filing the §8 affidavit or declaration have not changed since the date they were previously submitted to the USPTO, the §8 affidavit or declaration must include a statement to that effect. 37 C.F.R §2.161(a)(9)(i)(B). If the certification standards in use at the time of filing the §8 affidavit or declaration have changed since the date they were previously submitted to the USPTO, the §8 affidavit or declaration must include a copy of the revised certification standards. 37 C.F.R §2.161(a)(9)(i)(B).
If use in commerce is claimed, the owner must submit a verified statement that the owner is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R. §2.161(a)(9)(ii). If this verified statement is not filed with the original affidavit or declaration, it must also allege that the owner was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the §8 affidavit or declaration. See 37 C.F.R. §2.161(a)(2), (a)(9)(ii).
If use in commerce is claimed, the §8 affidavit or declaration must include a statement specifying the characteristic, standard, or other feature that is being certified by the mark, also known as the certification statement. See 37 C.F.R. §§2.45(a)(4)(i)(A), 2.161(a)(9)(iii).
Registrations Issued from Applications Based on §1 of the Act:
If the registration issued from an application based on §1 of the Act, the registration as issued included a certification statement specifying what the owner is certifying about the goods or services in the registration. See 37 C.F.R. §2.45(a)(4)(i)(A). This statement, if still accurate, must be included in the §8 affidavit or declaration. See 37 C.F.R. §2.161(a)(9)(iii). If what is being certified about the goods or services has changed, the owner must include in the §8 affidavit or declaration an amended certification statement specifying what the owner is currently certifying about the goods or services in the registration; however, an amendment that would materially alter the certification statement will not be permitted. See 37 C.F.R. §2.173(f); TMEP §1609.12.
Registrations Issued from Applications Based Solely on §44 of the Act:
If the registration issued from an application based solely on §44 of the Act, the registration as issued included a certification statement specifying what the owner will be certifying about the goods or services in the registration. See 37 C.F.R. §2.45(a)(4)(ii)(A). However, the §8 affidavit or declaration must include a certification statement specifying what the owner is certifying about the goods or services in the registration. See 37 C.F.R. §2.161(a)(9)(iii). The certification statement from the registration, if still accurate, must be included in the §8 affidavit or declaration using the present tense "is certifying," "certifies," or "is being certified." If what is being certified about the goods or services has changed, the owner must include in the §8 affidavit or declaration an amended certification statement specifying what the owner is currently certifying about the goods or services in the registration; however, an amendment that would materially alter the certification statement will not be permitted. See 37 C.F.R. §2.173(f); TMEP § 1609.12.
See TMEP §1306.03(a) for general information about certification statements.
If use in commerce is claimed, the §8 affidavit or declaration must contain a statement that the owner is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the owner. 37 C.F.R. §2.161(a)(9)(iii); see 37 C.F.R. §2.45(a)(4)(i)(C). This statement does not have to be verified.
To promote the accuracy and integrity of the trademark register and preserve the register as a reliable reflection of marks in use in commerce, the USPTO conducts random audits of §8 affidavits or declarations in which the mark is registered for more than one good or service per class under 37 C.F.R. §2.161(b).
If a §8 affidavit or declaration is selected for audit, the USPTO will require the owner to submit proof of use for goods and/or services in addition to those supported by the required specimen(s) showing current use of the registered mark in commerce. See 37 C.F.R. §§2.76, 2.88, 2.160. In response to an Office action issued in connection with the audit, the owner must provide proof of use for selected goods and/or services or delete all goods and/or services for which proof of use cannot be provided from the registration. In addition, for each submission in which an owner deletes goods and/or services from the registration after filing the §8 affidavit or declaration, whether in connection with an audit or not, the USPTO will assess a per-class fee for deletion. See 37 C.F.R §§2.6(a)(12)(iii), (iv), 2.161(c). Additional information about the audit may be found on the USPTO website Audit webpage.
An owner may discover inaccuracies in a §8 affidavit or declaration after submitting the filing to the USPTO.
Inaccuracies Discovered Before the Filing Has Been Accepted
If an owner discovers inaccuracies in a §8 affidavit or declaration before the USPTO has issued a notice of acceptance for the filing, and time remains in the statutory period for filing the §8 affidavit or declaration, the owner may submit a new affidavit or declaration with the accurate information. A petition to the Director under 37 C.F.R §2.146 is required if the owner wants to request that the previous §8 affidavit or declaration be disregarded and given no effect either because it was inaccurate or was filed by an unauthorized party.
Alternatively, a request to correct the current affidavit or declaration may be submitted as a voluntary amendment, if an Office action has not issued, or a timely Office action response, if an Office action has issued. The request will be reviewed by the Post Registration Section and an Office action will issue if the request is unacceptable. A deficiency surcharge may be due based on the timing and nature of the correction. See 15 U.S.C §1058(c); TMEP §1604.06(b).
Inaccuracies Discovered After the Filing Has Been Accepted
If an owner discovers inaccuracies in a §8 affidavit or declaration after the USPTO has issued a notice of acceptance for the filing, and time remains in the statutory period for filing the §8 affidavit or declaration, the owner may submit a new affidavit or declaration with the accurate information. A petition to the Director under 37 C.F.R §2.146 is required if the owner wants to request that the previous §8 affidavit or declaration be disregarded and given no effect either because it was inaccurate or was filed by an unauthorized party.
Alternatively, a request to correct the current affidavit or declaration may be submitted at any time. However, a petition to the Director under 37 C.F.R §2.146 is required for the correction to be reviewed. A correction request submitted as a voluntary amendment rather than as a petition to the Director will be made of record but not reviewed.
The owner may not reinsert goods and/or services that were deleted in the previously submitted affidavit or declaration. TMEP §1604.09(b).
Section 15 of the Trademark Act, 15 U.S.C. §1065, provides a procedure by which the exclusive right to use a registered mark in commerce on or in connection with the goods or services covered by the registration can become "incontestable," if the owner of the registration files an affidavit or declaration stating that the mark has been in continuous use in commerce for a period of five years after the date of registration.
Under §33(b) of the Act, 15 U.S.C. §1115(b), if the right to use the mark has become incontestable under §15, then the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions. Sections 15 and 33(b) apply only to registrations issued on the Principal Register.
Filing an affidavit or declaration of incontestability under §15 of the Trademark Act (§15 affidavit or declaration) is optional. An eligible registrant may choose to claim the benefits of incontestability and file an appropriate affidavit or declaration, or may elect to retain the registration without those benefits. The requirements for maintaining and renewing a federal registration are not affected.
The USPTO does not "accept" §15 affidavits or declarations. Arman’s Sys., Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 n.2. (TTAB 1982). Rather, the USPTO reviews the affidavit or declaration to determine whether it is consistent with the requirements of the statute and rules (e.g. , whether it is signed, whether it was filed at an appropriate time, and whether the §15 claims are properly set forth).
When a §15 affidavit or declaration complies with the requirements of the statute and rules, the USPTO updates its records to acknowledge receipt of the affidavit or declaration and sends a notice of acknowledgment to the owner of the registration. See 37 C.F.R. §2.167(i). Acknowledging receipt of the affidavit or declaration provides notice to the public that an affidavit or declaration of incontestability has been filed; it is not a determination by the USPTO that the registration is in fact incontestable. The question of whether the registration is incontestable arises and is determined by a court if there is a proceeding involving the mark.
If the §15 affidavit or declaration does not comply with the statute and rules, the USPTO issues a written action notifying the owner of any inconsistency or error, but does not require correction. If the §15 affidavit or declaration is filed alone, the owner is given six months from the issuance date of the Office action to file a response. If it is filed as part of a combined affidavit or declaration under §8 and §15 or §71 and §15, and there are issues in the Office action relating to both parts of the combined filing, the owner must file a response within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §8(a) or §71(a), whichever is later. See TMEP §§1604.16, 1613.16. If the issues in the Office action relate only to the §15 affidavit or declaration, the owner is given six months from the issue date of the Office action to file a response. If no response is received within the required time, the §15 affidavit or declaration will be abandoned. 37 C.F.R. §2.167(h). The USPTO does not update its records to acknowledge receipt of a noncompliant affidavit or declaration. The owner may file a new §15 affidavit or declaration, with a new filing fee. 37 C.F.R. §2.167(k).
A fee is required for each class in the registration to which the §15 affidavit or declaration pertains. 37 C.F.R. §§2.167(g). If insufficient fees are included with the affidavit or declaration, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees. 37 C.F.R. §2.167(g).
An owner may abandon a timely filed §15 affidavit or declaration that contains an inaccuracy by filing a petition to the Director under 37 C.F.R. §2.146(a)(3). 37 C.F.R. §2.167(j); see TMEP §§1605.03, 1704, 1707.
The limitation of grounds that a third party can raise in a petition to cancel a registered mark under 15 U.S.C. §1064 filed more than five years from the date of registration does not depend on the filing of a §15 affidavit or declaration. TMEP §1605.06.
See TMEP §1605.05 regarding a combined affidavit or declaration under §8 and §15 of the Act, and §1216.02 regarding the effect of "incontestability" in ex parte examination.
The provisions of §15 of the Trademark Act apply only to registrations issued on the Principal Register under the Act of 1946 and to registrations issued under the Acts of 1905 and 1881 that have been "published" under §12(c) of the Act, 15 U.S.C. §1062(c). See TMEP §1603 regarding §12(c).
A §15 affidavit or declaration may be filed for a registered extension of protection of an international registration to the United States. Section 73 of the Trademark Act, 15 U.S.C. §1141m.
Section 15 affidavits or declarations may not be filed for marks registered on the Supplemental Register of the Act of 1946, marks registered under the Act of 1920, or marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have not been claimed under §12(c). If a §15 affidavit or declaration is filed for a registration that is not eligible for the benefits of §15, the USPTO will not review it and will refund the filing fee.
Owners must file the §15 affidavit or declaration through TEAS at https://teas.uspto.gov, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23; TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions. TEAS almost immediately displays a "Success" page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information.
The owner may not file a §15 affidavit or declaration until the federally registered mark has been in continuous use in commerce for at least five consecutive years after the date of registration. This may be any five-year period after the date of registration for marks registered under the Act of 1946, or after the date of publication under §12(c) for marks registered under the Acts of 1905 and 1881.
The owner may file the affidavit or declaration within one year after the five-year period that is selected. 37 C.F.R. §2.167(f). The affidavit or declaration must be both executed and filed within that one-year period. If the affidavit or declaration is filed earlier than five years after the date of registration or the date of publication under §12(c), the USPTO will not review it and will refund the filing fee. The owner may file a new affidavit, with a fee, during the statutory filing period.
The USPTO does not review the validity of a claim of continuous use in commerce made in a §15 affidavit or declaration. Therefore, after timely filing a §15 affidavit or declaration, if the owner determines that the affidavit or declaration contained an inaccuracy, the owner may not request that the affidavit or declaration be withdrawn and the fee refunded. In such situations, the owner may file a petition to the Director under 37 C.F.R. §2.146(a)(3) requesting that the §15 affidavit or declaration be abandoned. See 37 C.F.R. §2.167(j); TMEP §§1704, 1707.
An affidavit or declaration filed through TEAS is considered to have been filed on the date the USPTO receives the submission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a).
Section 15 affidavits or declarations permitted to be filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed by the due date in accordance with 37 C.F.R. §2.197 or §2.198. See 37 C.F.R §2.195(b)(1)-(2). See TMEP §§301.02 regarding the limited exceptions for paper submissions, TMEP §§305.02-305.02(h) regarding certificate of mailing procedures, and §§305.03-305.03(e) regarding Priority Mail Express® procedures.
The USPTO will not acknowledge a §15 affidavit or declaration that is pending during the statutory period for filing a §8 or §71 affidavit or declaration unless the §8 or §71 affidavit or declaration has been accepted by the USPTO. If a §15 affidavit or declaration is filed alone during the statutory period for filing the §8 or §71 affidavit or declaration, the Post Registration staff will notify the owner that the registration will be cancelled without an acceptable §8 or §71 affidavit or declaration. In response to such notification, when applicable, the owner may request that the §15 affidavit or declaration be treated as a deficient six-year §8 or §71 affidavit or declaration. See TMEP §1604.04 regarding the deadlines for filing a §8 affidavit or declaration, §1604.05 regarding the requirements for filing a §8 affidavit or declaration, §1613.04 regarding the deadlines for filing a §71 affidavit or declaration, and §1613.05 regarding the requirements for filing a §71 affidavit or declaration.
See TMEP §1605.05 regarding a combined affidavit or declaration under §8 and §15 of the Act.
Section 15 of the Act refers to the affidavit or declaration merely as "setting forth" the specified information. See15 U.S.C. §1065(3). Therefore, no showing or proof beyond the owner’s verified statement is required.
Must Be Filed by Owner. In order to be effective, the §15 affidavit or declaration must be filed by the person who is the owner of the registration at the time the affidavit or declaration is filed. 37 C.F.R. §§2.167(a), 2.193(e)(1). If the affidavit or declaration was filed by the wrong party, the true owner may file a new affidavit or declaration, with a new filing fee.
Fee. A fee is required for each class in the registration to which the §15 affidavit or declaration pertains. See 37 C.F.R. §2.167(g). If insufficient fees are included with the affidavit or declaration, the Post Registration staff will issue an Office action allowing the owner additional time to submit the required fees. 37 C.F.R. §2.167(g).
Goods/Services/Collective Membership Organization Must Be Recited. The §15 affidavit or declaration must specify the goods, services, or nature of the collective membership organization recited in the registration on or in connection with which the mark has been in continuous use in commerce for the five-year period after the date of registration or publication under §12(c), and is still in use in commerce. 15 U.S.C. §1065(3); 37 C.F.R. §2.167(c). More than one affidavit or declaration may be filed at different times for different goods/services/classes in the same registration.
Mark Must Be in Use in Commerce. Regardless of the basis for registration, the use on which the §15 affidavit or declaration is based must be use in commerce. This applies to both foreign and domestic registrants. It is not necessary to specify the type of commerce (e.g., interstate) in which the mark is used. The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the U.S. Congress can regulate, unless there is contradictory evidence in the record. See TMEP §§901-901.04 regarding use in commerce.
No Adverse Decision or Pending Proceeding Involving Rights in the Mark. The §15 affidavit or declaration must state that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods, services, or collective membership organization, or to the owner’s right to register the mark or to keep the mark on the register. It must also state that there is no proceeding involving these rights pending in the USPTO or in a court and not finally disposed of. 15 U.S.C. §1065(1), (2); 37 C.F.R. §2.167(d), (e). If the USPTO finds facts contrary to either of the foregoing statements, the USPTO will not acknowledge receipt of the §15 affidavit or declaration. See TMEP §1605. The USPTO does not consider a proceeding involving the mark in which the owner is the plaintiff, where there is no counterclaim involving the owner’s rights in the mark, to be a "proceeding involving these rights" that would preclude the filing or acknowledgment of a §15 affidavit or declaration.
If the USPTO finds that there is a proceeding pending that involves the owner’s right to register the mark or to keep the mark on the register, the USPTO will not acknowledge the affidavit or declaration, even if the proceeding was instituted after the owner filed the §15 affidavit or declaration but before the affidavit or declaration was acknowledged by the USPTO. If a pending proceeding is later dismissed, the owner may file a new affidavit or declaration, with a new filing fee.
Verification Signature. The §15 affidavit or declaration must be properly signed in accordance with the guidelines in TMEP §611.03(a). Generally, the USPTO does not question the authority of the person who signs a §15 affidavit or declaration, unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §611.03(a).
Response signature. When it appears that a response to an Office action regarding the §15 affidavit or declaration is signed by an improper party, the Post Registration staff must follow the procedures in TMEP §§611.05-611.05(c).
See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of electronically filed affidavits or declarations.
A §15 affidavit or declaration may be combined with a §8 affidavit or declaration, if the combined affidavit or declaration meets the requirements of both §8 and §15.
The filing fee for a combined §8 and §15 affidavit or declaration is the sum of the cost of the individual filings. If the combined §8 and §15 affidavit or declaration is filed during the §8 grace period, the grace period surcharge per class for the §8 affidavit or declaration must be paid. There is no grace period surcharge for a §15 affidavit or declaration.
If a combined §8 and §15 affidavit or declaration is filed, and the §8 affidavit or declaration is deficient, the deficiency may be corrected before expiration of the relevant deadline set forth in §8 of the Act for no fee, or after expiration of the relevant deadline with the deficiency surcharge required by §8(c) of the Act, 15 U.S.C. §1058(c). See TMEP §§1604.17-1604.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies in a §8 affidavit or declaration. There is no deficiency surcharge for a §15 affidavit or declaration.
The combined §8 and §15 affidavit or declaration must be submitted through TEAS at https://teas.uspto.gov, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23; TMEP §301.01. TEAS almost immediately displays a "Success" page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied and pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information.
See TMEP §1613.19 regarding a combined filing under §71 and §15 of the Act.
Section 14 of the Trademark Act, 15 U.S.C. §1064, limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years from the date of registration or publication under §12(c). This limitation of grounds does not depend on the filing of a §15 affidavit or declaration. Trademark Trial and Appeal Board Manual of Procedure (TBMP) §307.02(b).
Section 9 of the Trademark Act, 15 U.S.C. §1059, requires that registrations resulting from applications based on §1 or §44 of the Trademark Act be renewed periodically. See TMEP §1606.02 .for information about the requirements for renewal under §9.
Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States. Renewal of international registrations must be made at the IB, in accordance with Article 7 of the Madrid Protocol. 37 C.F.R. §7.41(a). See TMEP §1614 for further information about renewal of international registrations.
An application for renewal of a registration issued under a prior Act, where required, must meet all the requirements of §9 of the Act and 37 C.F.R. §2.183. See TMEP §1602.02 regarding the renewal of registrations issued under the Acts of 1881 and 1905, and §1602.03 regarding the renewal of registrations issued under the Act of 1920.
A complete renewal application must include:
The application for renewal must be filed within one year before the expiration of the registration, or within the six-month grace period after the expiration of the registration with an additional grace period surcharge. If no renewal application is filed before the end of the grace period, the registration will expire. 15 U.S.C. §1059(a); 37 C.F.R. §2.182. Note that the pendency of a cancellation action does not toll the time for filing a renewal application. See 37 C.F.R. §2.134(b). See TMEP §§1602-1602.04 as to the term of a registration.
A renewal application may be filed on the anniversary dates of the statutory period.
Example: For a registration issued on November 5, 1998, an application for renewal may be filed as early as November 5, 2007, and as late as November 5, 2008, before entering the six-month grace period.
Under 37 C.F.R. §2.195(a), a renewal application filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. TEAS almost immediately displays a "Success" page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the application, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information.
An application for renewal of a registration permitted to be filed on paper is considered timely if it is received in the USPTO by the due date or if it is mailed by the due date in accordance with 37 C.F.R. §2.197 or §2.198. See 37 C.F.R §2.195(b)(1)-(2). See TMEP §301.02 regarding the limited exceptions for paper submissions, §§305.02-305.02(h) certificate of mailing procedures, and §§305.03-305.03(e) regarding Priority Mail Express® procedures.
The Director has no authority to waive the deadline for filing a proper §9 renewal application. See In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) ("Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner."). Cf. Checkers Drive-In Restaurants, Inc. v. Comm'r of Patents & Trademarks, 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied, 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit [under 15 U.S.C. §1058], Congress made no exception for the innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case.").
A renewal application may not be filed before the period specified in §9 of the Act. In re Holland Am. Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).
For Permitted Paper Filers. If an application for renewal is filed more than one year before the expiration date of the registration, the USPTO will advise the registrant: (1) that the renewal application is premature; (2) of the appropriate time period for filing a renewal application; (3) that the fees submitted will be held; and (4) that the registrant may file a new renewal application at the appropriate time or may request a refund at any time. See TMEP §301.02 regarding the limited exceptions for paper submissions.
There is no deficiency surcharge. The prematurely filed renewal application will be placed in the record for informational purposes only. A timely renewal application must be filed before the end of the grace period, or the registration will expire and the USPTO will refund the fees.
Owners must file the renewal application through TEAS at https://teas.uspto.gov, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23; TMEP §301.01. See TMEP §301.02 for the limited exceptions for paper submissions.
Because the deadlines for filing renewal applications coincide with the deadlines for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058(a)(2) at the end of each ten-year period following the date of registration, the USPTO has created a form for filing a §8 affidavit or declaration combined with a §9 renewal application. See TMEP §1604.19 for more information about combined filings under §8 and §9 of the Act.
An international registration may not be renewed under §9; these renewals must be filed with the IB. See TMEP §1614 for information about renewal of international registrations.
A renewal application must include the fee required by 37 C.F.R. §2.6 for each class for which renewal is sought. 15 U.S.C. §1059(a); 37 C.F.R. §2.183(b). See TMEP §§1401.02, 1401.04, and 1601.06 regarding use of international classification or prior United States classification for calculation of fees due. See TMEP §1606.05(c) regarding renewal applications filed with insufficient fees.
If the renewal application is filed during the six-month grace period, there is an additional grace period surcharge for each class for which renewal is sought. 15 U.S.C. §1059(a); 37 C.F.R. §2.183(c).
Under §9(a) of the Trademark Act, a deficiency surcharge is required for correcting a deficiency after expiration of the relevant deadline specified in §9 of the Act. If the renewal application is filed within one year before the expiration of the registration, a deficiency surcharge is required for correcting deficiencies after the expiration date of the registration. If the renewal application is filed during the grace period, a deficiency surcharge is required for correcting deficiencies after expiration of the grace period. See TMEP §§1606.13-1606.13(c) for further information regarding the procedures, deadlines, and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one renewal application or one combined filing under §8 and §9. See TMEP §1604.19 regarding combined filings under §8 and §9.
The grace period surcharge applies only if no filing was made within the year before the expiration of the registration. Someone who files within one year before the expiration of the registration, but corrects a deficiency after expiration of the registration, will be subject to the deficiency surcharge only. On the other hand, someone who files during the grace period and cures a deficiency after the grace period expires will be subject to both the grace period surcharge (for the ability to file the renewal application during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the expiration of the grace period). H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).
A §9 renewal application that does not include sufficient fees to cover the filing fee for all the classes to which the application pertains (and the grace period surcharge, where applicable), is deficient. If the renewal application is filed within one year before the expiration date of the registration, the deficiency may be corrected before the expiration date of the registration for no fee, or after the expiration date of the registration with the deficiency surcharge required by §9(a) of the Act, 15 U.S.C. §1059(a). If the renewal application is filed during the grace period, the deficiency may be corrected before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge required by §9(a) of the Act. See TMEP §§1606.13-1606.13(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the renewal application was filed without sufficient fee(s), but included an authorization to charge additional fees to a USPTO deposit account, the required fee (and grace period surcharge, where applicable) will be charged to the deposit account. If the deposit account authorization was included with the renewal application as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.
An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.
If a check submitted as payment of a filing fee for a renewal application permitted to be filed on paper (see TMEP §301.01) is returned unpaid, or an EFT or credit card payment is refused or charged back by a financial institution, this is also regarded as a deficiency. In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused. 37 C.F.R. §2.6(b)(10), see TMEP §405.06.
If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes and the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue a notice requiring either (1) the submission of additional fee(s) or (2) an indication of the class(es) to which the original fee(s) should be applied. If the required fee(s) are not submitted and the class(es) to which the original fee(s) should be applied are not specified, the USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class and will delete any unpaid classes. 37 C.F.R. §2.183(e). See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §9 renewal application.
The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be filed by the owner of the registration.
Therefore, if the renewal applicant is not the owner of record, the USPTO does not require that the renewal applicant show continuity of title from the original registrant.
However, registrations are renewed in the name of the party who is the owner of record of the registration, as shown in the Trademark database. The registration will be renewed in the name of a new owner only if the owner: (1) records an assignment or other document of title with the Assignment Recordation Branch; and (2) notifies the Post Registration staff at the time the renewal application is filed that the document has been recorded with the Assignment Recordation Branch. See TMEP §§504-504.04 regarding the circumstances in which the "Ownership" field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.
See TMEP §502.03 regarding issuance of a new certificate in the name of a new owner.
Under 37 C.F.R. §2.183(a), a renewal application must be signed by "the registrant or the registrant’s representative." Verification is not required.
Generally, the USPTO does not question the authority of the person who signs a renewal application, unless there is an inconsistency in the record as to the signatory’s authority to sign.
The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be executed within any particular time period. Therefore, the USPTO will accept undated renewal applications, and will not issue any inquiry or requirement regarding the date of execution of a renewal application.
See TMEP §1604.08(b) regarding the date of execution of the §8 affidavit or declaration and §1606.12 regarding signature of a response to an Office action issued in connection with a renewal application.
Neither the Trademark Act nor the Trademark Rules of Practice requires a specific listing of the goods/services/classes in the registration, if the renewal application covers all the goods/services/classes in the registration. However, if the renewal application covers less than all the goods/services/classes, the renewal application must include a list of the goods/services/classes for which renewal is sought. 37 C.F.R. §2.183(d).
If no goods/services/classes are specified in the renewal application, it will be presumed that renewal is sought for all the goods/services/classes in the registration.
If the renewal application lists only some of the goods/services/classes set forth in the registration, it will be presumed that renewal is sought for only the goods/services/classes listed, and the goods/services/classes omitted from the renewal application will be deleted from the registration.
Goods/services/classes that are not listed in the registration may not be listed in the renewal application.
The Trademark Act does not require that a renewal application include an affidavit or declaration of use in commerce, a specimen of use, or a showing that any nonuse is due to special circumstances that excuse the nonuse, and not due to any intention to abandon the mark. See 1228 TMOG 187 (Oct. 29, 1999). See also TMEP §§1604-1604.21(d) regarding affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058.
A renewal applicant who is not domiciled in the United States may file a document designating the name, email address, and postal address of a person residing in the United States on whom notices or process in proceedings affecting the registration may be served. 15 U.S.C. §1059(c); 37 C.F.R §2.24(a)-(b). The mere designation of a domestic representative, however, does not authorize the person designated to represent the owner. 37 C.F.R §2.24(c). See TMEP §610 regarding designation of a domestic representative by parties not domiciled in the United States.
Upon receipt of a §9 renewal application, the prosecution history of the registration in the Trademark database is updated to show that the renewal application has been filed. In addition, TEAS almost immediately displays a "Success" page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information. If a renewal application is filed on paper, and such a submission is permitted (see TMEP §301.02), no acknowledgment of receipt of the application is sent before it is examined.
If the renewal application is examined and found acceptable, the USPTO sends the registrant a notice that the registration is renewed. The USPTO does not issue an Updated Registration Certificate (URC) for renewed registrations.
If the renewal application is not acceptable, the USPTO issues an action stating the reasons for refusal. 15 U.S.C. §1059(b); 37 C.F.R. §2.184(a). See TMEP §1606.12 for more information regarding responses to Office actions.
The propriety of the original registration is not re-examined on renewal.
Deadline. If the renewal application is not acceptable, the USPTO will notify the renewal applicant of the reason(s) for refusal. 15 U.S.C. §1059(b); 37 C.F.R. §2.184(a). The registrant must file a response to a refusal of renewal within six months of the issuance date of the Post Registration Office action, or before the expiration date of the registration, whichever is later. If no response is filed within this time period, the registration will expire, unless time remains in the grace period under §9(a) of the Act, 15 U.S.C. §1059(a). If time remains in the grace period, the registrant may file a complete new renewal application, with a new fee. 37 C.F.R. §2.184(b)(1).
The registrant may file a petition to the Director under 37 C.F.R. §2.146(a)(5) and §2.148 to waive 37 C.F.R. §2.184(b)(1) and accept a late response to an Office action. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. See TMEP §1708. The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.184(b). See TMEP §1712.02(b). The "unintentional delay" standard of 37 C.F.R. §2.66 does not apply to a registrant’s failure to respond to an Office action issued in connection with a renewal application. TMEP §1714.01(f)(ii)(D).
Signature. The response must be properly signed in accordance with the guidelines in TMEP §611.03(b). See TMEP §611.06-611.06(h) for persons with legal authority to bind various types of juristic entities and §§602-602.03(c) regarding persons qualified to represent others before the USPTO in trademark cases.
When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must follow the procedures in TMEP §611.05-611.05(c).
Correction of Deficiencies. The renewal applicant may correct deficiencies, if the requirements of 37 C.F.R. §2.185 are met. See TMEP §§1606.13-1606.13(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the renewal application is filed within one year before the expiration date of the registration, deficiencies may be corrected, after notification from the Office, before the expiration date without paying a deficiency surcharge, or after the expiration date with payment of the deficiency surcharge required by §9(a) of the Act. 37 C.F.R. §2.185(a)(1).
Any deficiency must be cured within the set period for response to the Office action, i.e., within six months of the issuance date of the action, or before the expiration date of the registration, whichever is later. If no response is filed within this time period, the registration will expire, unless time remains in the grace period. If time remains in the grace period, the registrant may file a complete new renewal application, with a new fee. 37 C.F.R. §2.184(b); see TMEP §1606.12.
If the renewal application is filed during the grace period, deficiencies may be corrected, after notification from the Office, before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §9(a) of the Act. 37 C.F.R. §2.185(a)(2).
Deficiencies must be cured within six months of the issuance date of the Office action. 37 C.F.R. §2.184(b); see TMEP §1606.12.
If the renewal application is not filed within the statutory filing period (which includes the grace period), the registration will expire. Filing after the expiration of the grace period is not a deficiency that can be cured, even with a deficiency surcharge. 37 C.F.R. §§2.182, 2.185(b).
The action of the Post Registration staff on a §9 renewal application may not be appealed to the Trademark Trial and Appeal Board, but the registrant may file a petition to the Director for review of the action under 37 C.F.R. §2.146(a)(2) and §2.186(b). A petition fee is required by 37 C.F.R. §2.6 and §2.146(c). See TMEP §§1705–1705.09 regarding petition procedure.
A response to the initial refusal to accept a renewal application is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. 37 C.F.R. §2.186(a).
If the Post Registration staff continues the refusal of the renewal application, the registrant may file a petition to the Director for review of the action under 37 C.F.R. §2.146(a)(2), within six months of the issuance date of the action continuing the refusal. See TMEP §1705.04. If the registrant does not file a petition within six months of the issuance date, the registration will expire. 37 C.F.R. §2.186(b).
The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration of the decision (see TMEP §1606.14(c)), or an appeal to federal court (see TMEP §1606.14(d)) within two months of the issuance date of the decision on petition, the registration will expire.
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid with the request for reconsideration. See TMEP §1705.08 regarding requests for reconsideration of petition decisions.
The registrant may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on petition. 15 U.S.C. §§1071(a)(1), (b)(1); 37 C.F.R. §2.145(a), (c).
The deadline for filing an appeal or commencing a civil action is 63 days from the issuance date of the decision on petition. 15 U.S.C. §1071(a)(2), (b)(1); 37 C.F.R. §2.145(d)(1), (d)(3).
Under 37 C.F.R. §2.186(c), a decision on petition is necessary before the registrant can file an appeal or commence a civil action in any court.
A §9 renewal application and a §8 affidavit or declaration may be combined into a single document, if the document meets the requirements of both §§8 and 9 of the Act. 37 C.F.R. §2.166. See TMEP §1604.19 for further information about combined filings under §§8 and 9.
A petition to cancel a registration owned by another party may be filed with the Trademark Trial and Appeal Board under §14 of the Trademark Act, 15 U.S.C. §1064; 37 C.F.R. §2.111. See TBMP §§303, 307, 308, and 309, for the requirements and fees for filing a petition to cancel a registration.
The petition to cancel must be filed through the Electronic System for Trademark Trials and Appeals (ESTTA) at https://estta.uspto.gov/. 37 C.F.R. §2.111(c)(1). If ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. 37 C.F.R. §2.111(c)(2)(i). The paper petition to cancel must be accompanied by a petition to the Director under 37 C.F.R. §2.146, with the required fees and a showing that ESTTA was unavailable because of technical problems or that extraordinary circumstances are present. 37 C.F.R §2.111(c)(2)(i).
See TMEP §1608 regarding the voluntary surrender of one’s own registration for cancellation.
Registrations can also be cancelled under §37 of the Trademark Act, 15 U.S.C. §1119, pursuant to the final order of the court in an action involving a registered mark. The party who has prevailed in the civil action must submit a certified copy of the court order or decree to the Office of the Solicitor of the USPTO. See TMEP §1610.
The owner of a registration may voluntarily surrender his or her registration for cancellation, under §7(e) of the Trademark Act, 15 U.S.C. §1057(e). The owner of the registration must submit a TEAS Surrender of Registration for Cancellation form properly signed in accordance with the guidelines in TMEP §611.03(f). There is no fee. The request must be submitted through TEAS unless the owner is a national of a country exempted from the requirement to file through TEAS. See 37 C.F.R §2.23(a)-(c).
Filing a §8 affidavit or declaration, §71 affidavit or declaration, or §9 renewal application for fewer than the total number of classes in the registration is regarded as a surrender of the registration as to the class(es) that are omitted.
Unless the registration is the subject of a cancellation proceeding before the Trademark Trial and Appeal Board, a request for surrender is handled by the Post Registration Section. See TBMP §602.02(a) (regarding the voluntary surrender of a registration that is the subject of a cancellation proceeding before the Board); see also Christiane E, LLC v. Int’l Expeditions, Inc., 106 USPQ2d 2042 (TTAB 2013) (finding that registrant’s situation was not so extraordinary as to warrant a withdrawal of registrant's voluntary surrender of its registration).
If the registration is surrendered in its entirety, the USPTO updates its records accordingly, and sends the owner of record a notice that the registration is cancelled.
If fewer than all classes are surrendered, the USPTO updates the Trademark database to indicate that specified classes have been cancelled under §7(e) of the Act. A certified copy of the updated registration certificate may be obtained from the Patent and Trademark Copy Fulfillment Branch of the USPTO for a fee. See TMEP §111.
A request to surrender a registered extension of protection of an international registration to the United States may be filed either directly with the IB or with the USPTO. If it is filed with the USPTO, the USPTO will notify the IB of the cancellation of the request for extension of protection to the United States. See TMEP §1906.01(e) regarding renunciation, limitation, or cancellation of an international registration.
Under 37 C.F.R. §2.172, a surrender for cancellation may not subsequently be withdrawn.
An extension of protection of an international registration remains part of (and dependent on) the international registration even after registration in the United States. 15 U.S.C. §1141j; 37 C.F.R. §7.30; TMEP §§1601.01(c), 1904.08. All requests to record changes to an international registration must be filed at the IB.
Accordingly, the holder of a registered extension of protection may file a request for amendment under §7 of the Trademark Act with the USPTO only in limited circumstances, where the change will affect only the extension of protection to the United States. For example, a holder may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark that was provided during examination in the USPTO, or to limit or partially surrender goods/services/classes. If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States.
The USPTO will not accept an amendment of a registered extension of protection involving the holder’s name or address that has not been recorded with the IB. 37 C.F.R. §7.22; TMEP §1906.01(c).
The mark in a registered extension of protection cannot be amended. See TMEP §§1609.02, 1906.01(i).
See TMEP §§1904.13-1904.13(b) regarding amendment and correction of registered extensions of protection, and §§1906.01-1906.01(i) regarding requests to record changes at the IB.
Under §7(e) of the Trademark Act, a registration based on an application under §1 or §44 of the Trademark Act may be amended "for good cause." Any request for amendment of a mark must be accompanied by the required fee. 15 U.S.C. §1057(e); 37 C.F.R. §2.173(b)(1). To request amendment, the owner of the registration must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the requested amendment. The request must be submitted through TEAS unless the owner is a national of a country exempted from the requirement to file through TEAS. See 37 C.F.R §2.23(a)-(c). This request must be properly signed in accordance with the guidelines in TMEP §611.03(f).
When it appears that a response to an Office action regarding the Section 7 request is signed by an improper party, the Post Registration staff must follow the procedures in TMEP §§611.05-611.05(c).
Requests to amend registrations are handled by the Post Registration Section, unless the registration is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board. 37 C.F.R. §2.173(a).
Requests to amend registrations that are the subject of inter partes proceedings before the Trademark Trial and Appeal Board are handled by the Board. See37 C.F.R. §2.133; TBMP §§514-514.03. If a request to amend a registration that is the subject of an inter partes proceeding is filed with the Post Registration Section, the Post Registration staff will deny the request, and advise the owner to file a motion to amend pursuant to 37 C.F.R. §2.133. See TBMP §§502-502.07 for further information about filing motions with the Board.
If the request for amendment is granted, the USPTO sends an updated registration certificate showing the amendment to the owner of record, and updates USPTO records accordingly.
Mark in Registered Extension of Protection Cannot Be Amended
The holder of a registered extension of protection of an international registration to the United States cannot file a request to amend the mark under §7 of the Trademark Act. A registered extension of protection remains part of the international registration, and all requests to record changes to such a registration must be filed at the IB. However, the Madrid Protocol and the Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regs.) do not permit amendment of the mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The World Intellectual Property Organization [WIPO] Guide to the Madrid System International Registration of Marks under the Madrid Protocol (Guide to International Registration), ¶ 794, WIPO Doc. 455E/22 (2022), provides as follows:
[T]here is no provision in the legal framework of the Madrid System allowing for an amendment (or alteration) of a mark that is recorded in the International Register. If the holder wishes to protect the mark in a form that differs, even slightly, from the mark as recorded in the International Register, they must file a new international application. This is true even if the mark has been allowed to be changed in the basic mark, where such change is possible according to the law of the member of the Office of origin.
Therefore, the mark in a registered extension of protection cannot be amended.
Although the mark in a registered extension of protection cannot be amended, in some situations the holder of a registered extension of protection may file a request under §7 of the Trademark Act to add a standard character claim. If the international registration does not indicate that the mark is in standard characters, and the holder seeks to amend the registered extension of protection to add a standard character claim, the Post Registration staff must contact the Supervisor of the Madrid Processing Unit (MPU) via email for instructions on how to proceed. The holder may not add a standard character claim unless the mark meets the United States requirements for a standard character claim, as set forth in 37 C.F.R. §2.52(a). See TMEP §§807.03(a)-(b).
Amendment of Mark in Registration Based on §1 or §44 Application
Under §7(e) of the Trademark Act, 15 U.S.C. §1057(e), upon application by the owner and payment of the prescribed fee, a registration based on an application under §1 or §44 of the Trademark Act may be amended for good cause, if the amendment does not materially alter the character of the mark. 37 C.F.R. §2.173(d). See TMEP §§807.14-807.14(f) and 1609.02(a) regarding material alteration. A request to add a standard character claim to a mark designated as a typed drawing must be submitted pursuant to §7(e) and meet all of the requirements for an amendment to a registration that involves a change in the mark, including a new drawing, supporting specimen per class, and declaration. See TMEP §§1609.02(b)–(c).
Section 7(e) of the Trademark Act, 15 U.S.C. §1057(e), prohibits an amendment that materially alters the character of the mark. "Material alteration" is the standard for evaluating amendments to marks at all relevant stages of processing, both during examination of the application and after registration. See 37 C.F.R. §§2.72, 2.173(d); TMEP §807.14 .
In determining whether a proposed amendment is a material alteration of a registered mark, the USPTO will always compare the proposed amendment to the mark as originally registered.
The general test of whether an alteration is material is whether, if the mark in an application for registration had been published, the change would require republication in order to present the mark fairly for purposes of opposition. If republication would be required, the amendment is a material alteration.
An amendment of a registered mark is acceptable if the modified mark contains the essence of the original mark (i.e., the mark as originally registered), and the mark as amended creates essentially the same impression as the original mark. In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm’r Pats. 1996). For example, in marks consisting of wording combined with a design, if the word is the essence of the mark and the design is merely background embellishment or display that is not integrated into the mark in any significant way, the removal or change of the design will not be a material alteration of the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953). On the other hand, if a design is integrated into a mark and is a distinctive feature necessary for recognition of the mark, then a change in the design would materially alter the mark. See In re Dillard Dep't Stores, Inc., 33 USPQ2d 1052 (Comm’r Pats. 1993) (proposed deletion of highly stylized display features of mark "IN•VEST•MENTS" held to be a material alteration); Ex parte Kadane-Brown, Inc., 79 USPQ 307 (Comm’r Pats. 1948) (proposed amendment of "BLUE BONNET" mark to delete a star design and to change the picture of the girl held a material alteration).
When a mark is solely a picture or design, an alteration must be evaluated by determining whether the new form has the same commercial impression as the original mark, i.e., whether the form as altered would be likely to be recognized as the same mark. See Ex parte Black & Decker Mfg. Co., 136 USPQ 379 (Comm’r Pats. 1963) (proposed amendment to delete circle found to be a material alteration, where the circle was determined to be a prominent element of a design mark).
Marks entirely comprised of words can sometimes be varied as to their style of lettering, size, and other elements of form without resulting in a material alteration of the mark. See Ex parte Squire Dingee Co., 81 USPQ 258, recon. denied, 81 USPQ 543 (Comm’r Pats. 1949) (amendment from block lettering to script not a material alteration). However, changing from special form to standard characters, or the reverse, may be a material alteration. TMEP §807.03(d).
A generic or purely informational term may be deleted if the essence of the mark in appearance or meaning is not changed, but a word or feature that is necessary to the significance of the mark may not be deleted. Likewise, a unique or prominent design feature may not be deleted. See In re Richards-Wilcox Mfg. Co., 181 USPQ 735 (Comm’r Pats. 1974), overruled on other grounds, In re Umax Data Sys., Inc., 40 USPQ2d 1539 (Comm'r Pats. 1996) (proposed amendment to block lettering from mark comprising a diamond design surrounding the word "FYER-WALL" with an inverted channel bracket around the letters "RW" held a material alteration). See TMEP §807.14(a) regarding amendments deleting matter from a mark.
When applying for an amendment to a registration that involves a change in the mark, the owner of the registration must submit a new drawing displaying the amended mark. 37 C.F.R. §2.173(b)(3). See TMEP §§807-807.18 regarding drawings.
The owner of the registration must submit a specimen showing use of the proposed mark as amended for each class specified in the registration, and must include an affidavit or a declaration under 37 C.F.R. §2.20 stating that the specimen was in use in commerce at least as early as the date the §7 amendment was filed. 37 C.F.R. §2.173(b)(3). When requested by the USPTO, additional specimens must be provided. Id. If a single specimen supports multiple classes, the owner may so indicate by specifying which classes the specimen supports, and the Post Registration staff need not require multiple copies of the specimen. The Post Registration staff should make a Note to the File in the record indicating which classes the specimen supports.
One specimen per class showing use of the proposed mark as amended on or in connection with the goods, services, or collective membership organization is required, even if the mark originally registered based on a foreign registration under §44 of the Trademark Act, 15 U.S.C. §1126(e) or an extension of protection of an international registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a). See TMEP §1015 regarding the independence of a §44 registration from the underlying foreign registration.
Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the amendment. In such cases, the USPTO will require the owner to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §7 amendment. 37 C.F.R. §2.173(b)(4).
See TMEP §§904.03-904.04(c) regarding trademark specimens, §§1301.04-1301.04(j) regarding service mark specimens, §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, §1304.02(a)(i)(C) regarding specimens for collective membership marks, and §1306.02(a)(i)(B) regarding specimens for certification marks. See also TMEP §611.03(f) regarding who can sign a §7 request to amend the registration.
If a registration includes a disclaimer, description of the mark, and/or other miscellaneous statement (e.g., lining or stippling statement (see TMEP §808.01(b)), translation, transliteration, or color claim), any request to amend the registration must also include a request to make any necessary conforming amendments to the disclaimer, description, and/or miscellaneous statement. 37 C.F.R. §2.173(g). For example, if the mark is "XYZ INC.," with a disclaimer of the entity designator "INC.," and the owner of the registration proposes to amend the mark to remove "INC.," the proposed amendment should also request that the disclaimer be deleted.
If a proposed amendment does not include all necessary conforming amendment(s), the Post Registration staff will issue an Office action requiring the amendment(s).
Prior to November 2, 2003, the USPTO did not publish marks or issue registrations in color. An applicant who wanted to show color in a mark was required to submit a black-and-white drawing, with a statement describing the color(s). See TMEP §807.07(g). Effective November 2, 2003, the USPTO accepts color drawings. Black-and-white drawings with a color claim, or drawings that show color by use of lining patterns, are no longer permitted. Color drawings must be accompanied by a color claim naming the color(s) that are a feature of the mark, and a separate statement specifying where the color(s) appear(s) on the mark. 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a)-807.07(a)(ii).
In a registration based on an application filed before November 2, 2003, if the application included a black-and-white drawing with a statement claiming color, the owner may file a request under §7 of the Trademark Act to substitute a color drawing for the black-and-white drawing. The request must include: (1) a color drawing showing the same colors claimed in the registration; (2) a color claim naming the color(s) that are a feature of the mark; (3) a description of where the color(s) appear(s) in the mark; and (4) the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.173(a), (b)(1), (g). No specimen is required if the owner is merely substituting a color drawing for a legally equivalent black-and-white drawing, and is not amending the mark.
A special form drawing registered in black-and-white may be amended under §7(e) to include a claim of color, as long as the amendment does not constitute a material alteration. See 37 C.F.R. §2.173(d). Requests to amend the mark to color must include: (1) a color drawing; (2) a color claim naming the color(s) that are a feature of the mark; (3) a statement specifying where the color(s) appear(s) in the mark; (4) a specimen showing the mark as depicted on the amended drawing; and (5) the fee required by 37 C.F.R. §2.6. 37 C.F.R. §2.173(a), (b)(1), (g). See TMEP §§807.07-807.07(g) regarding requirements for color drawings and §§807.14(e)-807.14(e)(iii) regarding amendments to color features of marks.
When a mark shown in special form is amended under §7(e), and the mark shown on the new drawing page contains gray, or the description of the mark refers to black, white, and/or gray, the owner must clarify whether the mark is in color. Specifically, the record must contain either: (1) a statement that the mark is not in color; or (2) a statement that the colors black, white, and/or gray are features of the mark and a statement specifying the location of the colors. If not all are claimed as colors, the color location statement must specify that the black/white/gray is not claimed as color and represents background, outlining, shading, and/or transparent areas.
Likewise, if the §7(e) amendment includes a statement that color is claimed as a feature of the mark and the drawing contains black, white, and/or gray, the record must contain one of the following: (1) a statement that the color(s) black, white, and/or gray are features of the mark and statement specifying the location of the colors; or (2) a statement that the black/white/gray represents background, outlining, shading, and/or transparent areas and is not a part of the mark. No statement regarding a white background is required if the background of the drawing is white and it is clear that the white background is not part of the mark.
See TMEP §§807.07(f)-807.07(f)(ii) regarding requirements for drawings containing black, white, and/or gray.
Identification in Registered Extension of Protection
The identification of goods, services, or the description of the nature the collective membership organization in a registered extension of protection of an international registration to the United States may be amended only in limited circumstances that will affect only the extension of protection to the United States. TMEP §1609.01(a). Specifically, the holder of a registered extension of protection may file a request with the USPTO to amend the registered extension of protection to limit or partially surrender goods/services or limit or fully surrender a collective membership organization. If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States. See TMEP §1904.13(a).
If the owner amends the registration only to delete goods/services/classes prior to submission of the §71 affidavit or declaration, the owner will not be required to pay a fee. 37 C.F.R §2.6(a)(11)(iii).
All requests to record changes to an international registration must be filed at the IB. See TMEP §§1906.01-1906.01(i) regarding requests to record changes at the IB. Note that the IB does not permit amendments that expand the list of goods/services or broaden the nature of the collective membership organization in an international registration. See TMEP §1906.01(i).
See also TMEP §1904.15 regarding a notification of limitation in the list of goods/services or the nature of the collective membership organization in a registered extension of protection.
Amendment of Registration Based on §1 or §44 Application
In registrations based on applications under §1 and §44 of the Trademark Act, amendments may be made to the identification of goods/services/collective membership organization to restrict the identification or otherwise to change it in ways that would not require republication of the mark. However, goods/services or a collective membership organization may not be added to a registration by amendment. See37 C.F.R. §2.173(e).
In a multiple-class registration, deletion of less than all the goods or services in a single class constitutes an amendment, whereas deletion of an entire class constitutes a surrender of the registration for cancellation as to the class deleted. See37 C.F.R. §2.172. See TMEP §1608 regarding surrender.
If the owner amends the registration only to delete goods/services/classes prior to submission of the §8 affidavit or declaration, the owner will not be required to pay a fee. 37 C.F.R §2.6(a)(11)(iii).
Classification in Registered Extension of Protection Cannot Be Amended Under §7
The classification in a registered extension of protection of an international registration to the United States may not be amended under §7 of the Trademark Act. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1609.01(a). However, the holder of a registered extension of protection may request to amend the registered extension of protection to surrender class(es). See TMEP §1904.13(a).
Amendment of Registration Based on §1 or §44 Application
In a registration that issued based on an application under §1 or §44 of the Trademark Act, the classification may be amended under §7 of the Trademark Act, if the requested international classification is consistent with the current version of the Nice Agreement. 37 C.F.R. §2.85(e)(3). In such a case, the USPTO will amend the international classification and issue an updated registration certificate with the new classification noted.
The owner of a registration may reclassify registrations from multiple United States classes into a single international classification. For example, goods in U.S. classes 21 and 26 often fall into only International Class 9. Hence, an owner can request an amendment from U.S. classes 21 and 26 into International Class 9. If the owner reclassifies any of the goods/services in this manner, the owner must reclassify all the goods/services in the registration to the international classification system. 37 C.F.R. §2.85(e)(3).
The amendment must include the fee required by 37 C.F.R. §2.6 for §7 amendments. 37 C.F.R. §2.173(b)(1).
Addition/Deletion of Disclaimer. A registered mark may be amended to disclaim part of the mark. 37 C.F.R. §2.173(a). However, no amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought. 37 C.F.R. §2.173(h). This exception to the general prohibition against amendments to delete disclaimers applies in the limited situation where the mark is amended to delete the disclaimed matter. See TMEP §1609.02(d) regarding conforming amendments.
An amended registration must still contain registrable matter, and the mark as amended must be registrable as a whole. 37 C.F.R. §2.173(c).
Addition/Deletion of §2(f) Claim of Acquired Distinctiveness. An amendment under §7 of the Trademark Act seeking the addition or deletion of a §2(f) claim of acquired distinctiveness will not be permitted. 37 C.F.R. §2.173(i).
A registration cannot be restricted territorially by amendment under §7(e) of the Act. In re Forbo, 4 USPQ2d 1415 (Comm’r Pats. 1984). Generally, a concurrent use restriction cannot be removed from a registration by an amendment under §7(e), except where an entity that was the only exception to the owner’s right to exclusive use of its registered mark assigns its rights in the mark to the owner of the registration, so that all rights in the mark are merged in the owner. In re Alfred Dunhill Ltd., 4 USPQ2d 1383 (Comm’r Pats. 1987); TBMP §§1101.02, 1114.
The USPTO will accept a correction request changing the dates of use, even if the corrected dates are later than the dates originally set forth in the registration. See In re Pamex Foods, Inc., 209 USPQ 275 (Comm’r Pats. 1980); Grand Bag & Paper Co. v. Tidy-House Paper Prods., Inc., 109 USPQ 395 (Comm’r Pats. 1956). However, the USPTO will not enter a correction if the corrected dates are later than the dates that would have been accepted during examination. Therefore, the USPTO will not enter the following corrections:
Section 14 of the Trademark Act, 15 U.S.C. §1064, limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years after the date of registration.
Ordinarily, the five-year period runs from the date of the registration of the mark for a registration issued on the Principal Register under the Act of 1946, and from the date of publication under §12(c) of the Act for registrations issued under prior Acts and published under §12(c) of the Act of 1946, 15 U.S.C. §1062(c).
However, when a registration has been amended, the five-year period runs from the date of the amendment, to the extent that the amendment of the registration has in any way enlarged the owner’s rights, as though the registration had issued on the date of the amendment. See TBMP §307.02(c)(2).
A registration on the Supplemental Register may not be amended to the Principal Register. If the owner of a registration wishes to seek registration on the Principal Register of a mark for which it owns a registration on the Supplemental Register, the owner must file a new application. Under 15 U.S.C. §1062(a), a mark must be published for opposition before it can be registered on the Principal Register.
The USPTO may make a correction to a registration in appropriate cases, upon written request by the owner of the registration. The owner of the registration must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the error to be corrected, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions. This request must be properly signed in accordance with the guidelines in TMEP §611.03(f). See §7(g) of the Trademark Act, 37 C.F.R. §2.174, and TMEP §1609.10(a) regarding correction of USPTO errors; and §7(h) of the Act, 37 C.F.R. §2.175, and TMEP §1609.10(b) regarding correction of errors by the owner of a registration.
If the request for correction is granted, the USPTO updates its records to show the correction.
Registered Extension of Protection
If USPTO records show that a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge. The owner of the registration must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the error to be corrected, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); SeeTMEP §301.01 for more information about electronic filing. See TMEP §301.02 regarding the limited exceptions for paper submissions. This request must be properly signed in accordance with the guidelines in TMEP §611.03(f). See TMEP §1904.14 regarding a notification of correction in the international register with respect to a registered extension of protection.
Registration Based on Application Under §1 or §44
If a clerical error occurred through the fault of the USPTO, the USPTO will correct the error without charge. 15 U.S.C. §1057(g); 37 C.F.R. §2.174. Section 7(g) gives the Director the discretion to issue a certificate of correction of the existing registration, or to issue a new certificate of registration without charge.
The owner of the registration must submit a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form, specifying the error to be corrected, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); See TMEP §301.01 for more information about electronic filing. See TMEP §301.02 regarding the limited exceptions for paper submissions. This request must be properly signed in accordance with the guidelines in TMEP §611.03(f).
The USPTO will issue a certificate of correction if the change is non-material, such as a slight misspelling in the mark or the identification of goods/services, or an error in entering the owner’s name or address.
A USPTO error in classification may be corrected if the requested classification is consistent with the current version of the Nice Agreement. Republication is not required.
If correction of a USPTO error would result in a material change such that republication is required (e.g. ,a material change of the mark because the wrong mark published or a broadening of the identification of goods/services because goods/services were deleted in error), the USPTO will not issue a certificate of correction under §7(g). Section 12(a) of the Trademark Act, 15 U.S.C. §1062(a), requires examination and publication prior to registration. Therefore, the error can be corrected only by canceling the registration as inadvertently issued and republishing the mark with the correct information. Depending on the circumstances, the USPTO may give the owner the option of either: (1) keeping the registration as issued; or (2) having the registration cancelled as inadvertently issued and republishing the mark. If the mark is republished, and registration is not successfully opposed, the USPTO will issue a new certificate of registration with a new registration date.
In some cases, further examination may be required to correct a USPTO error that would materially change the registration, e.g. , where a proposed amendment to the mark or the identification of goods/services was filed prior to registration, but not timely made of record and reviewed by the examining attorney. In this situation, the registration will be cancelled as inadvertently issued and the application will be returned to examination. The examining attorney will examine the amendment using standard examination procedures. If the examining attorney approves the amendment, the mark will be republished. If the amendment is not acceptable, the examining attorney will issue a non-final Office action with a three-month response clause. See TMEP §705.08.
A request to have a registration cancelled as inadvertently issued should be directed to the Office of the Deputy Commissioner for Trademark Examination Policy.
Registered Extension of Protection
Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even after registration in the United States. However, in the limited circumstance where the holder of an international registration makes a mistake in a document filed during prosecution in the USPTO that affects only the extension of protection to the United States, the registrant may request correction of the error pursuant to 37 C.F.R. §2.175. See TMEP §1904.13(b).
See TMEP §1906 and §§1906.01-1906.01(i) regarding requests to record changes at the IB and §1904.14 regarding a notification of correction in the International Register with respect to a registered extension of protection.
Registration Based on Application under §1 or §44
Under §7(h) of the Trademark Act, 15 U.S.C. §1057(h), if a mistake in a registration occurs in good faith through the fault of the owner of the registration, the Director may correct the error upon written request and payment of the fee required by 37 C.F.R. §2.6, provided the correction does not result in a change that would require republication of the mark.
The owner of the registration must file a TEAS Section 7 Request for Amendment or Correction of Registration Certificate form specifying the error, explaining how the error occurred, and showing that it occurred in good faith. See 37 C.F.R. §2.175(b)(1). The request must be submitted through TEAS unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a). See TMEP §301.01 for more information about electronic filing. See TMEP §301.02 regarding the limited exceptions for paper submissions. The request must be properly signed in accordance with the guidelines in TMEP §611.03(f).
As noted above, the owner of a registration cannot correct a mistake if the changes would require republication of the mark. 15 U.S.C. §1057(h); 37 C.F.R. §2.175(a). Thus, a correction cannot be made if it would materially alter the mark, or broaden the identification of goods/services. See TMEP §807.14 and §1609.02(a) regarding material alteration and §1609.03 regarding changes to the identification of goods/services.
A registration can be corrected to cure an inadvertent error in the manner in which the owner’s name is set forth. However, the registration cannot be corrected to substitute another entity as the owner. See TMEP §1201.02(c) for examples of correctable and non-correctable errors in identifying the owner of an application or registration.
Section 7(h) gives the Director the discretion to issue either a certificate of correction of the existing registration or a new certificate of registration. See In re Pamex Foods, Inc., 209 USPQ 275, 277-78 (Comm’r Pats. 1980). In either case, if the mistake was made by the owner of the registration, a fee is required. See 15 U.S.C. §1057(h); 37 C.F.R. §§2.6, 2.175(b)(3).
It is not necessary to file a §7 amendment to change the address of the owner of a registration. The TEAS Change Address or Representation form may be used to make such a change.
Note: The owner address will differ from the correspondence address only if a qualified U.S. attorney has been recognized. See TMEP §609.02(e) for information regarding changing the correspondence address after registration.
A registration for a certification mark must include a statement specifying what the owner is certifying about the goods or services in the registration. See 37 C.F.R. §§2.161(a)(9)(iii), 7.37(a)(9)(iii)7.37(j)(3); TMEP §1306.03(a), 1604.21(c), 1613.21(c).
The certification statement must be sufficiently detailed to give proper notice of what is being certified. All of the characteristics or features that the mark certifies should be included. A certification mark registration is not limited to certifying a single characteristic or feature.
Under §7(e) of the Act, the certification statement may be amended if the amendment does not materially alter the certification statement. See 37 C.F.R. §2.173(f).
The USPTO must rectify the register and make appropriate entry upon its records in response to a court order certified to the USPTO pursuant to §37 of the Trademark Act, 15 U.S.C. §1119. That section provides:
In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.
Thus, §37 authorizes the USPTO to take, upon court order, actions concerning registrations. Id.; see also Piano Wellness, LLC v. Williams, 126 USPQ2d 1739, 1741 (TTAB 2018).
Any such order affecting a registration must be certified by the court. To submit a certified court order to the USPTO, it must be sent to the Office of the Solicitor, Mail Stop 8, P.O. Box 1450, Alexandria, Virginia 22313-1450. 37 C.F.R. §1.1(a)(3)(iii). A petition is not required to submit the certified court order. An uncertified copy of the court order is unacceptable. If the registration affected by the order is the subject of a pending or suspended inter partes proceeding at the Trademark Trial and Appeal Board, that fact should be noted in a cover letter to the Office of the Solicitor.
Once the USPTO receives the certified order, appropriate action will typically be taken by the USPTO without the necessity of any submission by an interested party. However, if it would be helpful for purposes of determining the scope or effect of an order, the USPTO may, at the Director’s discretion, issue a show cause order directing the registrant and parties to the action from which the order arose to respond and provide information or arguments regarding the order.
The USPTO normally will not act on a district court order until such proceedings are finally determined. Typically, the USPTO considers the proceedings to be finally determined when: (1) a decision on the merits of the case (i.e., a dispositive ruling or verdict that ends litigation on the merits) has been rendered; (2) a final judgment has been entered; (3) no pertinent post-judgment motion has been filed under Fed. R. Civ. P. 59(e); and (4) the period to file an appeal of the district court’s order to a court of appeals has expired with no appeal being filed, or, if an appeal is filed, until after the mandate issues and the time for petitioning for review to the U.S. Supreme Court has expired with no review being sought, and if U.S. Supreme Court review is sought, until after the Supreme Court denies a petition for certiorari or if it grants certiorari, until after the Supreme Court issues its decision.
USPTO records will be automatically updated to indicate the status of registrations as follows:
The reason the USPTO waits until approximately 10 days after the expiration of the grace period before updating its records to show that the registration is cancelled or expired is to avoid inadvertent cancellation or expiration of a registration due to a delay in entering a timely filed §8 or §71 affidavit or declaration or §9 renewal application into USPTO records. If an examining attorney determines that 10 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the examining attorney should contact the Supervisor of the Post Registration Section and request that the database be updated to show that the registration is cancelled or expired. If a party other than the examining attorney determines that 10 days have passed since the expiration of the grace period, but the Trademark database does not indicate that the registration is cancelled or expired, the party should send an email to TMFeedback@uspto.gov requesting that the database be updated to show that the registration is cancelled or expired.
If the owner of a registration who has not timely filed a §8 or §71 affidavit or declaration or §9 renewal application wants to expedite cancellation or expiration of its own registration, the owner must file a TEAS Surrender of Registration for Cancellation form, unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a). See TMEP §301.01 for more information about electronic filing. See TMEP §301.02 regarding the limited exceptions for paper submissions. The form must be signed in accordance with the guidelines in TMEP §611.03(f).
See TMEP §716.02(e) regarding suspension of an application for a conflicting mark pending cancellation of the cited registration under §8 or §71 of the Act or expiration of the cited registration for failure to renew under §9 of the Act.
The requirement for an owner’s email and domicile addresses is generally required in all post-registration submissions. 37 C.F.R §§2.18(c), 2.23(b), 2.189, 7.25(a). See TMEP §1612.01(a) regarding an owner’s email address and §1612.01(b) regarding an owner’s domicile address.
Registrants must provide and keep current a valid email address for correspondence. 37 C.F.R. §§2.18(c), 2.23(b), 7.25(a); TMEP §609.01. The registrant’s email address is required even if the registrant has appointed a qualified U.S. attorney, so that the USPTO can contact the registrant if representation ends.
Trademark registrants who are represented by an appointed qualified U.S. attorney may provide an email address of their choice in the owner email field of the TEAS forms. The email address cannot be identical to the listed primary correspondence email address of their attorney. Such email address will not be visible in the Trademark Status and Document Retrieval (TSDR) system. Only the correspondence email address of the attorney will be visible.
Trademark registrants who are not represented by such an attorney will have a correspondence email address that is identical to the owner address. In either situation, the email address can be a unique email address created specifically for this purpose. The email address of a registrant will be visible in TSDR in the correspondence email address field. To avoid receiving unsolicited communications at a personal or business email address, registrants may wish to create an email address specifically for communication and correspondence related to their trademark filings at the USPTO.
For qualified in-house counsel and attorneys representing themselves in a matter, the TEAS forms will still require two different email addresses: one for the owner email address field and one for the attorney email address field. For technical reasons related to the TEAS forms, these addresses cannot be identical.
Certain treaty filers exempt from email requirement. If the registrant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide the registrant’s email address does not apply. 37 C.F.R. §2.23(c); see TMEP §301.02(a).
See TMEP §§609-609.02(b) and §609.02(d)-(f) regarding establishing and changing the correspondence address.
Registrants must provide and keep current the address of their domicile and inform the USPTO of any changes to that address. 37 C.F.R. §2.189; TMEP §601.01(c). A registrant’s domicile address will determine whether the registrant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R. §§2.11, 11.1, 11.14(e); see TMEP §§601, 602, 1612(b). Although determinative of whether a qualified U.S. attorney is required, the requirement for an owner’s domicile address is separate from the requirement for an attorney. 37 C.F.R §2.189.
See TMEP §§601.01-601.01(b)(1) regarding determining an owner’s domicile and §601.01(d) regarding hiding the domicile address.
Mark owner initially unrepresented in post registration filings unless a qualified U.S. attorney is recognized in the filing or is appointed in a separate document. Recognition of a qualified U.S. attorney in a pending application ends when the mark registers. 37 C.F.R. §2.17(g)(1); TMEP §604.03. In addition, recognition of a qualified U.S. attorney established in connection with a §8, §12(c), §15, or §71 affidavit or declaration, §9 renewal application, or §7 request ends upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2); TMEP §604.03. Accordingly, an owner that is making any of these post-registration submissions is considered unrepresented unless a qualified U.S. attorney (1) is identified in and/or signs the submission or (2) is appointed in a separate power of attorney that is signed by the owner and is filed post registration and, when applicable, following the acceptance of a previous maintenance filing. 37 C.F.R. §2.17(b); TMEP §604.01.
Unrepresented non-U.S. domiciled owners must be represented by a qualified U.S. attorney in all post registration filings. An owner whose domicile is not located within the United States or its territories must be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R. §2.11(a); TMEP §601.
Determining whether owner has non-U.S. domicile. The Post Registration staff must determine whether the owner’s domicile address is outside the United States and its territories. To do this, Post Registration staff must follow the procedures in TMEP §§601-601.01(b)(1).
Issuing an Office action requiring clarification of domicile and requiring a qualified U.S. attorney to represent mark owner with domicile that is or may be outside the United States and its territories. If the owner’s domicile address is or may be outside of the United States and its territories, the Post Registration staff will follow the procedures in TMEP §§601-601.01(b)(1) and issue an Office action requiring clarification of the owner’s domicile and requiring the owner to have a qualified U.S. attorney.
If in a previous Office action the owner was required to be represented by a qualified U.S. attorney and their response was not filed by, nor are they represented by, such an attorney, then the Post Registration staff should issue a second action on all previously raised issues, including the requirement for a qualified U.S. attorney. See TMEP §601.01(a) and (b) regarding when a registrant is required to have U.S. counsel.
Required attorney identification information. See TMEP §1612(c) for more information.
See generally TMEP §§602-602.03(c) regarding persons authorized to practice before the USPTO in trademark matters, including §602.03(a) regarding Canadian trademark attorneys and agents. See also TMEP §604 regarding recognition as a representative and §605.04 regarding powers of attorney filed after registration.
If the registrant is represented by an attorney qualified under 37 C.F.R §11.14 or is required to appoint such an attorney under 37 C.F.R. §2.11(a) due to its foreign domicile, the registrant must provide the individual attorney’s name, postal address, email address, and bar information. See 37 C.F.R §§2.17(b)(3), 2.18(a)(2), (c). The USPTO requires this information only for the attorney of record (i.e., the primary attorney) and not for associate or other-appointed attorneys. For determining when a U.S.-licensed attorney must be appointed, see TMEP §§601-601.01(b).
Email Address. A valid email address must be provided for the registrant’s attorney, if one is appointed, that differs from the registrant’s email address in order for the USPTO to contact the registrant if representation ends. In this case, the TEAS forms will require email addresses for both the registrant and its attorney. The registrant may provide an email address of its choice, however, the listed primary correspondence email address of the registrant’s attorney cannot be identical to the registrant’s email address, even for in-house counsel and attorneys representing themselves in a trademark matter. Third-party email addresses may not be used as the primary email address for trademark correspondence. The registrant must maintain a current and accurate email address for its attorney of record. See 37 C.F.R §2.18(c).
Attorney bar information. The USPTO requires trademark registrants to provide attorney bar information for recognized attorneys in all trademark filings. 37 C.F.R §§2.17(b)(3). This requirement is not tied to the domicile of the registrant. See id.
Accordingly, the Post Registration staff will determine whether an appointed attorney or one signing or appearing in a post registration filing is properly licensed to practice in the United States and has provided his or her bar information. See 37 C.F.R §§2.17(b)(3), 11.14. See TMEP §602.01(a) for more information about the requirement for attorney bar information.
Under §71 of the Trademark Act, 15 U.S.C. §1141k, a registered extension of protection to the United States will be cancelled unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse ("§71 affidavits or declarations"). The purpose of the §71 affidavit or declaration is to remove marks that are no longer being used in commerce from the register.
Section 71 of the Trademark Act applies only to registered extensions of protection of international registrations to the United States. However, §8 of the Act, 15 U.S.C. §1058, requires periodic affidavits or declarations of use or excusable nonuse for registrations resulting from applications under §1 or §44 of the Trademark Act. See TMEP §§1604-1604.21(d) for further information about §8 affidavits or declarations.
A statement noting the requirement for filing the affidavits or declarations of use or excusable nonuse under §71 of the Act is included on each certificate of registration as originally issued. 15 U.S.C. §1141k(d). Additionally, a courtesy email reminder of USPTO maintenance filing deadlines will be sent to a trademark holder's current email address with the USPTO (including an email address authorized in an application filed before February 15, 2020). When a holder’s email address changes, the holder must use the Trademark Electronic Application System (TEAS) Change Address or Representation Form to promptly update the email address. See 37 C.F.R §2.18(c). The holder must file the affidavit or declaration within the time periods required by §71 of the Act regardless of whether the holder receives the notice on the registration certificate or in the courtesy email reminder. See 37 C.F.R. §§7.36(b), 7.38.
The holder must file the §71 affidavit or declaration through the Trademark Electronic Application System (TEAS), unless an exception to the requirement to file electronically through TEAS applies. See 37 C.F.R §2.23(a); TMEP §301.01. The TEAS Forms for filing affidavits or declarations of use or excusable nonuse under §71 are available at https://teas.uspto.gov.
See TMEP §1613.04 regarding the deadline for filing the affidavit or declaration and §1613.05 regarding the requirements for filing the affidavit or declaration.
During the following time periods, the holder of an international registration must file an affidavit or declaration of use or excusable nonuse, or the registered extension of protection will be cancelled under section 71 of the Act:
Under §71(a)(1) and (a)(2) of the Trademark Act, the holder of the international registration must file an affidavit or declaration of use or excusable nonuse:
Under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3), the holder may file the affidavit or declaration within a grace period of six months after the expiration of the deadlines set forth in §71(a)(1) and (a)(2) of the Act, 15 U.S.C. §1141k(a)(1), (a)(2), with an additional grace period surcharge. 37 C.F.R. §7.36(b)(3).
Affidavits or declarations may be filed on the U.S. registration anniversary dates at the end of the fifth and sixth years, or at the end of the ninth and tenth years.
Example: For a registration issued on Nov. 1, 2005, a six-year affidavit may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period.
A §71 affidavit or declaration filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a).
Section 71 affidavits or declarations permitted to be filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed by the due date in accordance with 37 C.F.R §2.197 or §2.198. See 37 C.F.R §2.195(b)(1)-(2). See TMEP §301.02 regarding the limited exceptions for paper submissions, §§305.02-305.02(h)regarding certificate of mailing procedures, and §§305.03-305.03(e) regarding Priority Mail Express® procedures.
If the holder of the registration does not file an affidavit or declaration of use or excusable nonuse before the end of the grace period, the registration will be cancelled. 37 C.F.R. §§7.36(b), 7.39(d). Note that the pendency of a cancellation action does not toll the time for filing an affidavit or declaration of use or excusable nonuse. See 37 C.F.R. §2.134(b). See TMEP §1613.07 regarding who may file a §71 affidavit or declaration.
The Director has no authority to waive the deadline for filing a proper affidavit or declaration of use of a registered mark under 15 U.S.C. §1141k. See Checkers Drive-In Rests., Inc. v. Comm'r of Patents and Trademarks, 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied, 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit, Congress made no exception for the innocent or the negligent. Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case."); In re Holland Am. Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) ("Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.").
Premature Filing of §71 Affidavit or Declaration
The affidavit or declaration cannot be accepted if it is filed before the periods specified in §71(a) of the Act. The purpose of the affidavit or declaration is to show that the mark is still in use in commerce within the relevant period, which cannot be done by an affidavit or declaration filed before that period. Cf. In re Holland Am. Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984). TEAS does not permit the premature filing of a §71 declaration.
For permitted paper filers. If an affidavit or declaration is filed before the time periods specified in §71(a)(1) and (a)(2) of the Act, the USPTO will issue a notice advising the holder: (1) that the affidavit or declaration is premature; (2) of the appropriate time for filing the affidavit or declaration; (3) that the fee(s) submitted will be held; and (4) that the holder may file a new affidavit or declaration at the appropriate time or may request a refund at any time. See TMEP §301.02 regarding the limited exceptions for paper submissions.
There is no deficiency surcharge. The prematurely filed affidavit or declaration will remain in the record for informational purposes only. The holder of the registration must file a newly executed affidavit or declaration before the end of the grace period or the registration will be cancelled and the USPTO will refund the fees.
See TMEP §1613.08(b) regarding the date of execution of a §71 affidavit or declaration.
See TMEP §§1613.06–1613.19 for general requirements for §71 affidavits or declarations of use or excusable nonuse for trademarks or service marks and §§1613.20–1613.21(d) for additional requirements for §71 affidavits or declarations for collective marks and certification marks.
Under 15 U.S.C. §1141k(b) and 37 C.F.R §7.37(a)(4)(i), an affidavit or declaration of use or excusable nonuse must include the fee required by 37 C.F.R. §7.6 for each class that the affidavit or declaration covers. See TMEP §§1401.02 and 1401.04-1401.04(b) regarding use of international classification to calculate fees due.
If the affidavit or declaration is filed during the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k (a)(3), it must include the grace period surcharge per class required by 37 C.F.R. §7.6. 37 C.F.R §7.36(b)(3).
Section 71(c) of the Trademark Act, 15 U.S.C. §1141k(c), requires a "deficiency surcharge" for correcting deficiencies in the affidavit or declaration after expiration of the deadlines specified in §71. See TMEP §§1613.17-1613.17(c) regarding the deadlines and surcharge for correcting deficiencies.
Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration. Similarly, only a single deficiency surcharge is required to correct several deficiencies within one §71 affidavit or declaration.
The grace period surcharge applies only where no filing was made during the sixth year after the date of registration, or within the year before the end of any ten-year period after the date of registration. A holder who files within these periods, but corrects a deficiency after these periods have expired, will be subject to the deficiency surcharge only. On the other hand, someone who files during the grace period and cures deficiencies after expiration of the grace period will be subject to both the grace period surcharge (for the ability to file the affidavit or declaration during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the end of the grace period). See H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).
An affidavit or declaration that does not include a fee, or does not include sufficient fees for all the classes to which the affidavit or declaration pertains (and the grace period surcharge, where applicable), is deficient. Fee deficiencies may be cured before expiration of the deadlines set forth in §71 of the Act, 15 U.S.C. §1141k, without payment of a deficiency surcharge, or after expiration of the deadlines set forth in §71 of the Act with the deficiency surcharge required by §71(c) of the Act. See TMEP §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the affidavit or declaration was filed without sufficient fee(s), but the affidavit or declaration included an authorization to charge deficient fees to a USPTO deposit account (37 C.F.R. §2.208), the required fee(s) (and grace period surcharge, where applicable) will be charged to the deposit account. If the deposit account authorization was included with the affidavit or declaration as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.
An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.
If a check submitted with a permitted paper filing (see TMEP §301.01) as payment of a filing fee for an affidavit or declaration of use or excusable nonuse is returned unpaid, or an electronic funds transfer (EFT) or credit card payment is refused or charged back by a financial institution, this is regarded as a deficiency. In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused. 37 C.F.R. §2.6(b)(10). See TMEP §405.06 for additional information.
If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes, and the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue an Office action requiring either (1) submission of the additional fee(s) or (2) specification of the class(es) to which the initial fee(s) should be applied. 37 C.F.R §7.37(a)(4)(iii). If the holder does not respond within the time period set out in the Office action by submitting the additional fee(s) or specifying the class(es) to which the original fee(s) should be applied, the USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest-numbered class and will delete any unpaid class(es). Id. See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §71 affidavit or declaration.
The affidavit or declaration of use or excusable nonuse must be filed by the holder of the international registration. Filing by the holder is a minimum requirement that must be met before the expiration of the deadlines set forth in §71(a) of the Act, 15 U.S.C. §1141k(a), (i.e., during the sixth year after the date of registration in the United States, or within the year before the end of every ten-year period after the date of registration in the United States), or within the six-month grace period after expiration of these deadlines. 37 C.F.R. §§7.36(b), 7.37(a)(1).
If it is unclear whether the party who filed the affidavit or declaration is the present holder, the Post Registration staff will issue an Office action requiring the party to establish its ownership. See TMEP §1613.07(b).
If the affidavit or declaration was not filed in the name of the holder of the registration, and there is time remaining in the statutory filing period (which includes the grace period), the true holder may (1) submit, in response to an Office action, a correction of the name in the filing of record or (2) file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §7.6, and, if applicable, a specimen of use for each class. If a new affidavit or declaration is filed during the grace period, the holder must include the grace period surcharge per class with the new affidavit or declaration. If a correction is submitted, the holder must also confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true holder. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2); TMEP §1613.08(a). If the original affidavit or declaration was not signed by an authorized signatory, the holder must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder, that affirms the representations in the original affidavit or declaration. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2).
If the affidavit or declaration was not filed in the name of the holder of the registration, and there is no time remaining in the grace period, the deficiency may be corrected within a prescribed time. 15 U.S.C. §1141k(c). The Post Registration staff will issue an Office action notifying the party who filed the affidavit or declaration of the ownership issue and of the time period within which it must be corrected. The true holder may submit a correction to the filing of record within the prescribed time and must also include the deficiency surcharge. 37 C.F.R. §7.6(a)(8). If a correction is submitted, the holder must also verify that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true holder. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2); TMEP §1613.08(a). If the original affidavit or declaration was not signed by an authorized signatory, the holder must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder, that affirms the representations in the original affidavit or declaration. See 37 C.F.R. §§2.193(e)(1), 7.37(a)(2).
See also TMEP §1613.07(e) regarding mistakes in setting forth the name of the holder.
When the affidavit or declaration is filed by someone other than the original holder of the registration, the USPTO cannot accept the affidavit or declaration unless there is clear chain of title from the original holder to the party who filed the affidavit or declaration. TMEP §502.01.
If USPTO records do not show a clear chain of title in the party who filed the affidavit or declaration, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration. Ownership can be established by recording the appropriate documents with the International Bureau of the World Intellectual Property Organization (IB). 37 C.F.R. §7.22; TMEP §1904.06. Actual evidence of a chain of title cannot be submitted to the USPTO to establish ownership of an extension of protection.
Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB. A holder cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Recordation Branch of the USPTO. The USPTO will record only those notifications received from the IB. The IB will notify the USPTO of any changes of the name of the holder or in ownership of the international registration recorded in the International Register, and the USPTO will automatically update the Trademark database to reflect the change(s). TMEP §§501.07, 1904.06.
The holder should notify the Post Registration staff when Office records indicate that the change in the name or ownership has been received from the IB. The USPTO cannot recognize the party who filed the §71 affidavit or declaration as the current holder until notification is received from the IB that a change in name or ownership has been recorded. Therefore, the holder may wish to contact the IB at https://www.wipo.int/madrid/en/index.html#contact regarding the recordation of the appropriate documents. Additionally, a new holder can check TSDR to determine whether the Trademark database has been updated to reflect all changes received from the IB. See TMEP §1613.07(a) regarding an affidavit or declaration filed by a party who was not the holder of the registration at the time of filing.
The procedures for establishing ownership, as discussed in TMEP §1613.07(b), also apply to changes of name and changes of legal entity. See TMEP §1613.07(d) regarding changes of name.
A change in the country or other jurisdiction of incorporation is a change of legal entity, creating a new party.
The death of a partner, or other change in the membership of a partnership, normally creates a change in legal entity unless the partnership agreement provides for continuation of the partnership and the relevant law permits this.
A merger of companies into a new company normally constitutes a change of legal entity.
Affidavits or declarations may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person’s authority to act on behalf of the present holder. If there is a court order, a copy of the order should be submitted.
A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §71 affidavit or declaration. Therefore, if the holder records a change of name with the IB and subsequently files the §71 affidavit or declaration in its former name, the USPTO will not issue an inquiry regarding ownership.
However, if it is unclear from USPTO records whether the party who filed the affidavit or declaration is the holder of record, the holder must record appropriate documentation of the change of name with the IB. See37 C.F.R. §7.22; TMEP §1613.07(b). Actual evidence cannot be submitted to the USPTO to establish ownership of an extension of protection.
If the affidavit or declaration was filed by the holder of the registration, but there is a mistake in the manner in which the name of the holder is set out in the affidavit or declaration, the mistake can be corrected. See In re Atlanta Blue Print Co., 19 USPQ2d 1078 (Comm’r Pats. 1990). No deficiency surcharge is required in this situation.
See TMEP §1613.07(a) regarding an affidavit or declaration mistakenly filed in the name of a person or existing legal entity who did not own the mark as of the filing date.
See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
See TMEP §611.03(a) regarding who may sign the affidavit or declaration. Generally, the USPTO does not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign. See TMEP §611.03(a).
Under 37 C.F.R. §7.37(a)(2), the verified statement must be executed on or after the beginning of the relevant filing period specified in §71 of the Act, 15 U.S.C. §1141k, (i.e., on or after the fifth anniversary of the date of registration in the United States, on or after the beginning of the one-year period before the end of each ten-year period after the date of registration in the United States, or during the available grace period). Because the purpose of the affidavit or declaration is to attest to the use or excusable nonuse of the mark within the time periods specified in §71 of the Act, the affidavit or declaration cannot be executed before these time periods begin.
An affidavit or declaration filed within the period specified in §71 of the Act, but executed before that period, is deficient. The holder of the registration will be required to submit a substitute or supplemental affidavit or declaration attesting to use in commerce (or excusable nonuse) on or in connection with the goods/services/collective membership organization within the relevant period specified in §71 of the Act.
If the prematurely executed §71 affidavit or declaration was filed during the relevant period specified in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States or within one year before the end of any ten-year period after the date of registration in the United States), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §71(c) of the Act. If the prematurely executed §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1613.04 regarding the deadlines for filing §71 affidavits and TMEP §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
Date of Execution Omitted. If the §71 affidavit or declaration is signed, but the date of execution is omitted, the Post Registration staff must require that the holder of the registration set forth the date of execution for the record. If the affidavit or declaration was executed within the relevant filing period, no deficiency fee is required. If there are no other outstanding issues, the holder may provide the Post Registration staff with the date by telephone or email and the Post Registration staff must enter an appropriate Note to the File in the record. If the affidavit or declaration was not executed within the relevant filing period, the affidavit or declaration is deficient, and the holder must submit a substitute or supplemental affidavit or declaration, as discussed above.
See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of an affidavit or declaration filed through TEAS.
The format of the verification may be: (1) the classical form for verifying, which includes an oath (jurat) (see TMEP §804.01(a)); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath (see TMEP §804.01(b)). 37 C.F.R. §2.2(n).
Under 15 U.S.C. §1141k(b) and 37 C.F.R §7.37(a)(5)(i), the affidavit or declaration must specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce, and/or the goods, services, or nature of the collective membership organization for which excusable nonuse is claimed. See TMEP §1613.10 regarding use in commerce and §1613.11 regarding excusable nonuse. The affidavit or declaration may incorporate by reference the identification set forth in the registration certificate (e.g., "all goods/all services/or the nature of the collective membership organization listed in the existing registration" or "all goods/services/classes listed in the registration except... [specifying the goods/services/classes not covered by the affidavit or declaration]"). Incorporation by reference is recommended to avoid inadvertent omissions.
If the holder is alleging use with respect to some of the goods/services/classes and excusable nonuse for other goods/services/classes, the holder must clearly indicate which goods/services/classes are in use and which goods/services/classes are not in use.
If the holder of the registration intends to delete goods/services/classes from the registration, this should be expressly stated in the affidavit or declaration. 37 C.F.R §7.37(a)(5)(ii). Once a holder expressly indicates an intention to delete goods, services, or classes from a registration, they may not be reinserted.
If the holder of the registration deletes goods/services/classes from the registration after submission and prior to acceptance of the §71 affidavit or declaration through TEAS, the holder must pay the relevant per class fee in 37 C.F.R §7.6(a)(6)(iv). 37 C.F.R §7.37(c).
An affidavit or declaration that fails to list or incorporate by reference all the goods/services/or the nature of the collective membership organization listed in the registration, and does not include a statement of intent to delete the omitted goods/services/classes, is deficient. In such case, the Post Registration staff will issue an Office action requiring the party to either (1) file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services/collective membership organization or (2) state that the omitted goods/services/classes should be deleted.
If the holder files a substitute or supplemental affidavit or declaration adding the omitted goods/services/ collective membership organization, the holder must verify that the mark was in use in commerce on or in connection with the goods/services/collective membership organization during the relevant filing period specified in §71 of the Act, 15 U.S.C. §1141k. This substitute affidavit or declaration may be filed before expiration of the relevant deadline set forth in §71 of the Act for no fee, or after expiration of the deadline set forth in §71 of the Act with the deficiency surcharge required by §71(c) of the Act. See TMEP §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the holder does not file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services/collective membership organization within the period for response to the Office action ( see TMEP §1613.16), the omitted goods/services/classes will be deleted from the registration.
Goods and/or services that are not listed in the registration may not be set forth in the §71 affidavit or declaration.
The §71 affidavit or declaration must state that the mark is in use in commerce, unless excusable nonuse is claimed. 37 C.F.R §7.37(a)(6)(i). See TMEP §1613.11 regarding excusable nonuse. The use in commerce requirement may be satisfied if the mark has not been abandoned and the use meets the statutory definition of "use in commerce," i.e., bona fide use in the ordinary course of trade, and not made merely to reserve a right in the mark. 15 U.S.C. §1127. The §71 affidavit or declaration does not have to specify the type of commerce (e.g., interstate) in which the mark is used. The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that the U.S. Congress can regulate, unless there is contradictory evidence in the record.
A §71 affidavit or declaration that does not state that the mark is in use in commerce is deficient. The holder must submit a substitute affidavit or declaration stating that the mark was in use in commerce on or in connection with the goods, services, and/or collective membership organization identified in the registration during the relevant period specified in §71 of the Trademark Act, 15 U.S.C. §1141k, as follows:
If the §71 affidavit or declaration was filed during the relevant period specified in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §71(c) of the Act. If the §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1613.04 regarding the deadlines for filing §71 affidavits or declarations, and §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
While a substitute affidavit or declaration may be filed after the expiration of the period specified in §71 of the Act, the substitute affidavit or declaration must attest to use within the time period specified in §71 of the Act. Therefore, if the substitute affidavit or declaration does not state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization within the relevant period specified in §71 of the Act, the USPTO will not accept the §71 affidavit or declaration, and the registration will be cancelled.
. . .
The purpose of Section 71 of the Trademark Act is to remove from the register those registrations that have become deadwood. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969) . It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the holder of the registration. See In re Moorman Mfg. Co.,203 USPQ 712 (Comm’r Pats. 1979). Thus, if the mark is not in use in commerce but the holder believes the registration should not be cancelled, the holder may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark. 15 U.S.C. §1141k(b)(2); see Ex parte Kelley-How-Thomson Co., 118 USPQ 40 (Comm’r Pats. 1958).
Requirements for Affidavit or Declaration
Because Section 8(b)(2)(B) of the Act provides that the affidavit "shall … include a showing"―language that implies proof―merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient. See In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993); In re Moorman Mfg. Co., supra; Ex parte Astra Pharm. Prod., Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chem. Mfg. Co., 118 USPQ 106 (Comm’r Pats. 1958). Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the holder’s control or "forced by outside causes." See In re Conusa Corp., supra; In re Moorman Mfg. Co., supra; Ex parte Kelley-How-Thomson Co., supra.
The affidavit or declaration must state when use in commerce stopped and give the approximate date when use is expected to resume. 37 C.F.R §7.37(a)(6)(ii). If the holder was unable to commence use due to special circumstances beyond the holder’s control that excuse the nonuse, the holder should state that the mark was never in use and give the approximate date when use is expected to begin. The affidavit or declaration must also specify the reason for nonuse, the specific steps being taken to put the mark in use, and any other relevant facts to support a finding of excusable nonuse.
The goods/services/classes for which excusable nonuse is claimed must be specified. See TMEP §§1613.09-1613.09(d) regarding proper specification of the goods/services/collective membership organization.
In a multiple-class registration, there must be a recitation of facts as to nonuse for each class to which the affidavit or declaration pertains, or it must be clear that the facts recited apply to all the classes.
Presumption of Abandonment
If the mark has not been in use for three consecutive years and the holder has done nothing to try to resume use of the mark, the USPTO may presume that the holder has abandoned the mark. 15 U.S.C. §1127; see Imperial Tobacco Ltd. v. Phillip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., 126 USPQ2d 1526, 1533 (TTAB 2018); Dragon Bleu (SARL) v. VENM, LLC, 112 USPQ2d 1925 (TTAB 2014) ; Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997).
Examples of Special Circumstances that Do and Do Not Excuse Nonuse
In addition to a showing that there is no intention to abandon the mark, the holder must show that nonuse is due to special circumstances beyond the holder's control that excuse nonuse. The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:
Supplementary Evidence or Explanation of Nonuse
If the USPTO determines that the facts set forth do not establish excusable nonuse, the holder may file supplementary evidence or explanation, within the response period set forth in the Office action. If the affidavit or declaration included a claim of excusable nonuse when filed, no deficiency surcharge will be required for supplementing this claim with additional evidence or an explanation.
New Affidavit or Declaration Claiming Use
If there is time remaining in the statutory filing period (including the grace period) and the holder responds to the Office action by submitting a new affidavit or declaration with a claim of use, specimen, and filing fee, the USPTO will examine the new affidavit or declaration of use.
A §71 affidavit or declaration must include a specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed. 15 U.S.C. §1141k(b); 37 C.F.R §7.37(a)(7). When requested by the USPTO, additional specimens must be provided. 37 C.F.R §7.37(a)(7). The specimen must show use of the mark within the time period specified in §71 of the Act. If the specimen does not show use of the mark within the time period specified in §71 of the Act, it is unacceptable to show current use of the mark in commerce. An affidavit or declaration that does not include a specimen that shows current use of the mark in commerce is deficient. See 15 U.S.C §1141k(b).
See TMEP §§904.03-904.04(c) regarding trademark specimens, §§1301.04-1301.04(j) regarding service mark specimens, §1303.01(a)(i)(C) regarding specimens for collective trademarks and collective service marks, §1304.02(a)(i)(C) regarding specimens for collective membership marks, and §1306.02(a)(i)(B) regarding specimens for certification marks.
The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the goods/services/classes listed in the registration. A specimen that shows use of a materially different mark (see TMEP §1613.13), or shows use of the mark on other goods/services/classes, is unacceptable. An affidavit or declaration that does not include an acceptable specimen for each class is deficient. See 37 C.F.R §7.37(a)(7).
If a single specimen supports multiple classes, the holder should so indicate, and the Post Registration staff need not require additional copies of the specimen. The Post Registration staff should enter a Note to the File in the record indicating which classes the specimen supports.
If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services/classes during the relevant period specified in §71 of the Act. See 37 C.F.R. §7.39; see also TMEP §1613.12(c) (regarding substitute specimens).
The USPTO will not return specimens.
See TMEP §904.02(a) and §1613.12(b) regarding electronically filed specimens and §904.02(b) regarding permitted paper-filed specimens.
Under 37 C.F.R §2.56(d), the specimen must be submitted through TEAS in a file format that is designated acceptable by the USPTO. See TMEP §904.02(a) for more information regarding electronically filed specimens.
Sometimes, no visible specimen is in the record due to a technical problem during submission of the affidavit or declaration. In this situation, the Post Registration staff should first send an email to the TEAS mailbox to ask whether the problem can be fixed by uploading the file again. If it cannot, the Post Registration staff must ask the holder to submit: (1) the specimen (or an exact copy of the specimen) that was attached to the original electronically filed affidavit or declaration; and (2) a statement by the person who transmitted the affidavit or declaration to the USPTO that the specimen being submitted is a true copy of the specimen submitted with the electronically filed affidavit or declaration. This statement does not have to be verified. Alternatively, the holder may submit a new specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services during the relevant period specified in §71 of the Act. No deficiency surcharge is required. See TMEP §1613.12(c) regarding the requirements for an affidavit or declaration supporting use of substitute specimens.
If a specimen for any class is omitted or is deficient, the holder must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §71 of the Act, 15 U.S.C. §1141k, as follows:
If the §71 affidavit or declaration was filed during the relevant period specified in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), the substitute specimen may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §71(c) of the Act. If the §71 affidavit or declaration was filed during the grace period, the substitute specimen may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge. See TMEP §1613.04 regarding the deadlines for filing §71 affidavits or declarations and §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
While a substitute specimen and supporting affidavit or declaration may be filed after the expiration of the period specified in §71 of the Act, the supporting affidavit or declaration must attest to use of the specimen within the time period specified in §71 of the Act. Therefore, if the affidavit or declaration supporting the substitute specimen does not state that the specimen was in use in commerce prior to the end of the relevant period specified in §71 of the Act, the USPTO will not accept the affidavit or declaration, and the registration will be cancelled as to any class for which no proper specimen was submitted.
See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding the proper person to sign an affidavit or declaration.
The mark to which the §71 affidavit or declaration pertains must be essentially the same as the mark that appears in the registration. Where the specimen reflects a change in the mark since the registration issued, acceptance of the affidavit or declaration will depend on the degree of change. A material alteration of the mark will result in refusal of the affidavit or declaration on the ground that the registered mark is no longer in use. See In re Int’l Nickel Co., Inc., 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Cont'l Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967). See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); In re Holland Am. Wafer Co., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).
Mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark. See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953) (change in matter determined to be mere background and type face held not a material alteration of "PETER PAN" mark). However, each case must be decided on its own facts, and these general rules are subject to exceptions. The controlling question is always whether the old and new forms of the mark create essentially the same commercial impression. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U. 797 F.3d at 1370, 116 USPQ2d at 1133-34 (holding minor adjustment to the font and alterations to the design element of registered mark insufficient to change the commercial impression created by the mark).
Generally, the standard used to determine whether a change is material under §71 is the same as the standard used to determine whether the mark in a registration based on an application under §1 or §44 of the Trademark Act may be amended under 15 U.S.C. §1057(e). If the mark could be amended under §7(e) because the character of the mark had not been materially altered, then the specimen filed with the §71 affidavit or declaration should be accepted. In determining whether a change constitutes a material alteration, the USPTO will always compare the mark in the specimen to the mark as originally registered. See TMEP §§807.14-807.14(f) and 1609.02(a) for additional information about material alteration.
However, where the registered mark is currently used as one of several elements in a composite mark, the decision as to whether to accept the specimen requires consideration of whether the registered mark makes an impression apart from the other elements of the composite mark. If the display of the composite is such that the essence of the registered mark makes a separate impression, then the specimen may be sufficient for purposes of the §71 requirement. In many cases, word elements are severable from design elements, because words tend to dominate in forming a commercial impression. See In re DeWitt Int’l Corp., 21 USPQ2d 1620 (Comm’r Pats. 1991). If the mark, as used on the §71 specimen, creates a separate impression apart from any other material on the specimen, then the specimen may be accepted as evidence of current use of the registered mark.
If the USPTO determines that the mark on the specimen is a material alteration of the registered mark, the holder may file a substitute specimen. If the holder files a substitute specimen after expiration of the relevant filing period specified in §71 of the Act, the holder must pay the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c), and 37 C.F.R. §7.6. See TMEP §1613.12(c) regarding substitute specimens, and 37 C.F.R. §7.39 and TMEP §§1613.17-1613.17(c) regarding the procedures for correcting deficiencies in a §71 affidavit.
If the USPTO accepts the §71 affidavit or declaration, and there is a difference between the mark on the specimen filed with the affidavit or declaration and the mark in the registration, the mark as originally registered remains the mark of record. The holder cannot file a request for amendment under §7(e) of the Act as the mark in a registered extension of protection cannot be amended. In some situations, however, the holder may file a request under §7(e) to add a standard character claim. See TMEP §1609.02.
If the holder of the international registration of the mark is not domiciled in the United States, the affidavit or declaration may include the name, email address, and postal address of a U.S. resident on whom notices or process in proceedings affecting the registration may be served. 15 U.S.C §1141k(f); 37 C.F.R §2.24(a)-(b). The mere designation of a domestic representative, however, does not authorize the person designated to represent the holder. 37 C.F.R §2.24(c). See TMEP §610 regarding designation of a domestic representative by parties not domiciled in the United States.
Upon receipt of a TEAS §71 affidavit or declaration, the USPTO updates the prosecution history of the registration in the Trademark database to indicate that the affidavit or declaration has been filed. TEAS almost immediately displays a "Success" page that confirms receipt. TMEP §303.02(a). This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied-and-pasted into an electronic record for storage. TEAS also separately sends an email acknowledgement of receipt, which includes a summary of the filed information.
If a §71 affidavit or declaration is permitted to be filed on paper (see TMEP §301.02), no acknowledgment of receipt of the affidavit or declaration is sent before it is examined, unless the holder includes a stamped, self-addressed postcard with the affidavit or declaration (see TMEP §303.02(c)).
If, upon examination, the USPTO determines that the affidavit or declaration is acceptable, the USPTO issues a notice of acceptance. If the affidavit or declaration is not acceptable, the USPTO issues an Office action stating the reasons for refusal. 37 C.F.R. §7.39.
Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the affidavit or declaration. In such cases, the USPTO will require the holder to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §71 affidavit or declaration. 37 C.F.R. §7.37(b).
The propriety of the original registration is not re-examined in connection with the affidavit or declaration under §71.
Deadline. Under 37 C.F.R. §7.39(a), the holder must file a response to a refusal within six months of the issue date of the Office action, or before the end of the relevant filing period set forth in §71(a) of the Act, whichever is later. If no response is received within that time, the registration will be cancelled, unless time remains in the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3). If time remains in the grace period, the holder may file a complete new affidavit or declaration, with a new fee. 37 C.F.R §7.39(b).
The holder may file a petition to the Director under 37 C.F.R. §2.146(a)(5) and §2.148 to waive 37 C.F.R. §7.39(a) so that a late response to an Office action may be accepted. However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured. See TMEP §1708. The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §7.39(a). See TMEP §1712.02(b). The "unintentional delay" standard of 37 C.F.R. §2.66 does not apply to the failure to respond to an Office action issued in connection with a §71 affidavit or declaration. TMEP §1714.01(f)(ii)(D).
Signature. The response must be properly signed in accordance with the guidelines in TMEP §611.03(b). See TMEP §§611.06-611.06(h) for persons with legal authority to bind various types of juristic entities and §§602-602.03(c) regarding persons qualified to represent others before the USPTO in trademark cases.
When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must follow the procedures in TMEP §§611.05-611.05(c).
Correction of Deficiencies. See TMEP §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.
If the affidavit or declaration is filed within the time periods set forth in section 71 of the Act, deficiencies may be corrected after notification from the Office, as follows:
If the affidavit or declaration is filed during the periods set forth in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), deficiencies may be corrected, after notification from the Office, within the relevant period without paying a deficiency surcharge, or after the expiration of the relevant period with payment of the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c).
Any deficiency must be cured before the end of the relevant filing period set forth in §71 of the Act or within the set period for response to the Office action, whichever is later. 15 U.S.C. §1141k(c). If no response is filed, or if the holder does not correct the deficient affidavit or declaration, within this time period, the registration will be cancelled, unless time remains in the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3). If time remains in the grace period, the holder may file a complete new affidavit, with a new fee. See TMEP §1613.16.
If the affidavit or declaration is filed during the six-month grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k (a)(3), deficiencies may be corrected, after notification from the Office, before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c).
Deficiencies must be cured within six months of the issuance date of the Office action. 37 C.F.R. §7.39(a); see TMEP §1613.16.
The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed within the time period set forth in §71 of the Act (including the grace period). 15 U.S.C. §1141k(a). Untimely filing cannot be cured after expiration of the grace period, even with a deficiency surcharge. See TMEP §1613.04 regarding the deadline for filing the affidavit or declaration.
The action of the Post Registration staff on a §71 affidavit or declaration may not be appealed to the Trademark Trial and Appeal Board, but the holder may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 7.40(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c). See TMEP §§1705–1705.09 regarding petition procedure.
A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal. 37 C.F.R. §7.40(a).
If the Post Registration staff continues the refusal to accept the affidavit or declaration, the holder may file a petition for review of the action under 37 C.F.R. §2.146(a)(2) within six months of the issuance date of the action continuing the refusal. See TMEP §1705.04. If the holder does not file a petition within six months, the registration will be cancelled. 37 C.F.R §7.40(b).
The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO. In the absence of a request for reconsideration (see TMEP §1613.18(c)), or an appeal to an appropriate court (see TMEP §1613.18(d)) within two months of the issuance date of the decision on petition, the registration will be cancelled.
Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition. A second petition fee must be paid with the request for reconsideration. See TMEP §1705.08 regarding requests for reconsideration of petition decisions.
The holder of the registration may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition. 15 U.S.C. §1071(a)(1), (b)(1); 37 C.F.R. §2.145(a), (c).
The deadline for filing an appeal or commencing a civil action is 63 days from the issuance date of the decision on petition. 15 U.S.C. §1071(a)(2), (b)(1); 37 C.F.R. §2.145(d)(1), (d)(3).
Under 37 C.F.R. §7.40(c), a decision on petition is necessary before the holder can file an appeal or commence a civil action in any court.
A §71 affidavit or declaration may be combined with a §15 affidavit or declaration, if the combined affidavit or declaration meets the requirements of both §71 and §15.
The filing fee for a combined §71 and §15 affidavit or declaration is the sum of the cost of the individual filings.
If the combined §71 and §15 affidavit or declaration is filed during the §71 grace period, the grace period surcharge per class for the §71 affidavit or declaration must be paid. There is no grace period surcharge for a §15 affidavit or declaration.
If a combined §71 and §15 affidavit or declaration is filed, and the §71 affidavit or declaration is deficient, the deficiency may be corrected before expiration of the relevant deadline set forth in §71 of the Act for no fee, or after expiration of the relevant deadline with the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c). See TMEP §§1613.17-1613.17(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies in a §71 affidavit or declaration. There is no deficiency surcharge for a §15 affidavit or declaration.
In addition to the requirements specified in 37 C.F.R. §7.37(a)(1)-(7) and TMEP §§1613.06–1613.19, a complete §71 affidavit or declaration pertaining to a collective trademark or service mark for which use in commerce is claimed must include:
If use in commerce is claimed, the holder must submit a verified statement that the holder is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R §7.37(a)(8)(i). If this verified statement is not filed with the original affidavit or declaration, it must also allege that the holder was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the §71 affidavit or declaration. See 37 C.F.R §7.37(a)(2), (a)(8)(i).
The holder must state the nature of the holder’s control over the use of the mark by the members, in the first §71 affidavit or declaration of use filed with the USPTO. 37 C.F.R §7.37(a)(8)(ii). A statement that the holder’s bylaws or other written provisions specify the manner of control is sufficient to satisfy this requirement.
The following language may be used for the above purpose:
The holder controls the members’ use of the mark in the following manner: [specify, e.g., the holder’s bylaws specify the manner of control].
In addition to the requirements specified in 37 C.F.R. §7.37(a)(1)-(7) and TMEP §§1613.06–1613.19, a complete §71 affidavit or declaration pertaining to a certification mark for which use in commerce is claimed must include:
Submitting certification standards for the first time. In the first §71 affidavit or declaration of use filed with the USPTO, the holder must include a copy of the standards established to determine whether others may use the certification mark on their goods and/or in connection with their services. 37 C.F.R §7.37(a)(9)(i)(A).
The standards do not have to be originally created by the holder. They may be standards established by another party, such as specifications promulgated by a government agency or standards developed through research of a private research organization.
The standards must cover the full scope of the goods/services identified in the registration. For example, if the goods are "olive oil," but the standards are only for "extra virgin olive oil," the USPTO must require the holder to submit standards that cover all types of olive oil or to amend the identification to "extra virgin olive oil."
In the rare circumstance when it is impracticable to provide a copy of the standards, the USPTO may accept a permanent link or permanent URL to the holder’s standards with a synopsis of those standards. This provision is not intended as a general alternative for providing a copy of the standards; it applies only to situations when the nature of the standards makes providing a copy impracticable. For example, it may be impracticable to include a copy of the standards if the standards exceed 1,000 or more pages.
Certification standards submitted in prior filing. If the certification standards in use at the time of filing the §71 affidavit or declaration have not changed since the date they were previously submitted to the USPTO, the §71 affidavit or declaration must include a statement to that effect. 37 C.F.R §7.37(a)(9)(i)(B). If the certification standards in use at the time of filing the §71 affidavit or declaration have changed since the date they were previously submitted to the USPTO, the §71 affidavit or declaration must include a copy of the revised certification standards. Id.
If use in commerce is claimed, the holder must submit a verified statement that the holder is exercising legitimate control over the use of the mark in commerce. See 37 C.F.R §7.37(a)(9)(ii). If this verified statement is not filed with the original affidavit or declaration, it must also allege that the holder was exercising legitimate control over the use of the mark in commerce during the relevant time period for filing the §71 affidavit or declaration. See 37 C.F.R §7.37(a)(2), (a)(9)(ii).
If use in commerce is claimed, the §71 affidavit or declaration must include a statement specifying the characteristic, standard, or other feature that is being certified by the mark, also known as the certification statement. See 37 C.F.R. §§2.45(a)(4)(i)(A), 7.37(a)(9)(iii).
The registration as issued included a certification statement specifying what the holder will be certifying about the goods or services in the registration. See 37 C.F.R. §2.45(a)(4)(ii)(A). However, the §71 affidavit or declaration must include a certification statement specifying what the holder is certifying about the goods or services in the registration. See 37 C.F.R. §7.37(a)(9)(iii). This statement, if still accurate, must be included in the §71 affidavit or declaration using the present tense "is certifying," "certifies," or "is being certified." If what is being certified about the goods or services has changed, the holder must include in the §71 affidavit or declaration an amended certification statement specifying what the holder is currently certifying about the goods or services in the registration; however, an amendment that would materially alter the certification statement will not be permitted. See 37 C.F.R. §2.173(f); TMEP §1609.12.
See TMEP §1306.03(a) for general information about certification statements.
If use in commerce is claimed, the §71 affidavit or declaration must contain a statement that the holder is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the holder. 37 C.F.R. §7.37(a)(9)(iii); see 37 C.F.R. §2.45(a)(4)(i)(C). This statement does not have to be verified.
To promote the accuracy and integrity of the trademark register and preserve the register as a reliable reflection of marks in use in commerce, the USPTO conducts random audits of §71 affidavits or declarations in which the mark is registered for more than one good or service per class under 37 C.F.R §7.37(b).
If a §71 affidavit or declaration is selected for audit, the USPTO will require the holder to submit proof of use for goods and/or services in addition to those supported by the required specimen(s) showing current use of the registered mark in commerce. See 37 C.F.R §7.36. In response to an Office action issued in connection with the audit, the owner must provide proof of use for selected goods and/or services or delete all goods and/or services for which proof of use cannot be provided from the registration. In addition, for each submission in which an owner deletes goods and/or services from the registration after filing the §71 affidavit or declaration, whether in connection with an audit or not, the USPTO will assess a per-class fee for deletion. See 37 C.F.R §§7.6(a)(6)(iii), (iv), 7.37(c).
Additional information about the audit may be found on the USPTO website Audit webpage.
A holder may discover inaccuracies in a §71 affidavit or declaration after submitting the filing to the USPTO.
Inaccuracies Discovered Before the Filing Has Been Accepted
If a holder discovers inaccuracies in a §71 affidavit or declaration before the USPTO has issued a notice of acceptance for the filing, and time remains in the statutory period for filing the §71 affidavit or declaration, the holder may submit a new affidavit or declaration with the accurate information. A petition to the Director under 37 C.F.R §2.146 is required if the holder wants to request that the previous Section 71 affidavit or declaration be disregarded and given no effect either because it was inaccurate or was filed by an unauthorized party.
Alternatively, a request to correct the current affidavit or declaration may be submitted as a voluntary amendment, if an Office action has not issued, or a timely Office action response, if an Office action has issued. The request will be reviewed by the Post Registration Section and an Office action will issue if the request is unacceptable. A deficiency surcharge may be due based on the timing and nature of the correction. See 15 U.S.C §1141k(c); TMEP §1613.06(b).
Inaccuracies Discovered After the Filing Has Been Accepted
If a holder discovers inaccuracies in a §71 affidavit or declaration after the USPTO has issued a notice of acceptance for the filing, and time remains in the statutory period for filing the §71 affidavit or declaration, the holder may submit a new affidavit or declaration with the accurate information. A petition to the Director under 37 C.F.R §2.146 is required if the holder wants to request that the previous §71 affidavit or declaration be disregarded and given no effect either because it was inaccurate or was filed by an unauthorized party.
Alternatively, a request to correct the current affidavit or declaration may be submitted at any time. However, a petition to the Director under 37 C.F.R §2.146 is required for the correction to be reviewed. A correction request submitted as a voluntary amendment rather than as a petition to the Director will be made of record but not reviewed.
The holder may not reinsert goods and/or services that were deleted in the previously submitted affidavit or declaration. TMEP §1613.09(b).
The holder of a registered extension of protection of an international registration to the United States must renew the international registration with the 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 Regulations. See TMEP §1905.
Under §70(b) of the Trademark Act, 15 U.S.C. §1141j(b), and Article 3ter(2) of the Protocol, if the international registration is not renewed, the IB will notify the USPTO that the registration has expired. The corresponding extension of protection to the United States will expire as of the expiration date of the international registration. The USPTO will cancel the extension of protection.
Section 9 of the Trademark Act, 15 U.S.C. §1069, does not require renewal of a registered extension of protection with the USPTO. However, the holder must file affidavits or declarations of use or excusable nonuse under §71 of the Trademark Act, 15 U.S.C. §1141k. See TMEP §1613.
A registration may be divided only if ownership of the registration has changed with respect to some, but not all, of the goods/services/classes. 37 C.F.R. §2.171(b). Requests to divide registrations are processed in the Post Registration Section.
See TMEP §1615.01 regarding division of registrations based on applications under §1 and §44 of the Trademark Act, and §1615.02 regarding division of registered extensions of protection.
If ownership of a registration has changed with respect to some but not all of the goods/services/classes, the owner is strongly encouraged to file a request that a registration be divided into two or more separate registrations, to ensure that USPTO records will accurately reflect current ownership information.
A party requesting division of a registration must: (1) record the change of ownership with the Assignment Recordation Branch of the USPTO; (2) file a request to divide; and (3) pay the fee required by 37 C.F.R. §2.6(a)(8) for each new registration created by the division. 37 C.F.R. §2.171(b)(1).
The request must be signed by the individual owner of the registration, someone with legal authority to bind a juristic owner (e.g. ,a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.171(b)(1), 2.193(e)(2); TMEP §611.03(b). If the owner is represented by a qualified practitioner, the practitioner must sign. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a). If the owner is not represented by a qualified practitioner, the individual owner or someone with legal authority to bind a juristic (e.g., a corporate officer or general partner of a partnership) owner must sign. 37 C.F.R. §§2.193(e)(2)(ii), 11.14(e). In the case of joint owners who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §2.193(e)(2)(ii). If the request does not meet these requirements, the Post Registration staff will issue an Office action granting the party who filed the request six months in which to comply with the requirements of the rule. If there is no response, the request to divide will be dismissed.
A party who requests division of a registration issued under the old United States classification system (see TMEP §1401.02) must agree to adopt the international classification system for both the parent and child registration. See TMEP §1609.04 regarding amendment of classification.
Once the registration is divided, the USPTO will: (1) create a new registration number for the child registration and update the information about the parent and child registration in its automated records; (2) create a new registration certificate for the child registration and an amended registration certificate for the parent registration; (3) publish notice of both the parent and child registrations in the Trademark Official Gazette and scan both the child and amended parent registration certificates into TICRS; and (4) issue a registration certificate for the child registration to the new owner. The USPTO will not issue an amended registration certificate for the parent registration to the owner of the parent registration unless the owner submits a request and pays the fee required by 37 C.F.R. §2.6(a)(8).
A registration may be divided more than once.
When ownership of an international registration changes with respect to some but not all of the goods/services/classes for all designated Contracting Parties, the IB will create a separate new international registration for the goods/services/classes that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to International Registration, B.II.67.01.
When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods/services/classes, the USPTO will construe the IB’s notice as a request to divide. The USPTO will update the USPTO records to reflect the change in ownership, divide out the assigned goods/services/classes from the registered extension of protection (parent registration), and publish notice of the parent registration in the Trademark Official Gazette. 37 C.F.R. §2.171(b)(2)(i). The USPTO will issue an amended registration certification for the parent registration upon payment of the fee required by 37 C.F.R. §2.6(a)(8).
The USPTO will create a new registration number for the child, and enter the information about the new registration into the Trademark database. The USPTO will notify the new owner that the new owner must pay the fee required by 37 C.F.R. §2.6(a)(8) to obtain a new registration certificate for the child registration. It is not necessary for the new owner to file a separate request to divide. 37 C.F.R. §2.171(b)(2)(ii). If the new owner does not respond to the notice, the child registration will remain active, as long as the owner files the necessary maintenance documents, but the USPTO will not issue a new registration certificate for the child registration, or publish notice of the child registration in the Trademark Official Gazette.
The USPTO will not divide a registered extension of protection to the United States unless the IB notifies the USPTO that the international registration has been divided. 37 C.F.R. §2.171(b)(2)(iii).
A registration may be divided more than once.
See TMEP §1110.11 regarding division of a pending §66(a) application after ownership has changed with respect to some but not all of the goods/services/classes and §501.07 regarding assignment of extensions of protection.
If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States (1) are owned by the same person, (2) identify the same mark, and (3) list the same goods/services/collective membership organization, the extension of protection shall have the same rights as those accrued to the United States national registration at the time the certificate of extension of protection issues. Section 74 of the Trademark Act, 15 U.S.C. §1141n; 37 C.F.R. §7.28(a); Article 4bis. See TMEP §1904.12 for further information on requests to note replacement of a United States national registration with a registered extension of protection. All requests to note replacements should be directed to the Madrid Processing Unit.
