The Section 71 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a registered extension of protection in the United States under the Madrid Protocol. The Section 71 only applies to trademarks that are registered with the USPTO through the Madrid Protocol. If your trademark is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration), then you are required to file the Section 8 Declaration of Use rather than the Section 71 Declaration of Use.
When Must I File the Section 71 Declaration of Use?
The first Section 71 Declaration of Use must be filed no earlier than five years after the date on which the extension of protection was granted, and no later than six years after the date on which the extension of protection was granted. So, for instance, if the extension of protection was granted on January 5, 2020, the earliest you could file the Section 71 would be January 5, 2025, and the latest you could file it would be January 5, 2026.
Thankfully, the USPTO provides a six-month “grace period” in which to submit the Section 71 Declaration of Use. So, in the above example, you would actually have until July 5, 2026 to file the Section 71 (six months after January 5, 2026). You should be aware that the government filing fees are significantly more expensive if you submit the Section 71 Declaration of Use within the grace period. Therefore, you should try your very best to file it before the beginning of the grace period.
A second Section 71 Declaration of Use must be filed no earlier than nine years after the date on which the extension of protection was granted, and no later than ten years after the date on which the extension of protection was granted. So, in the above example, the second Section 71 would need to be filed between January 5, 2029 and January 5, 2030. If you include the grace period, it would need to be filed no later than July 5, 2030. A Section 71 must then be filed every ten years thereafter in order to maintain the extension of protection.
Furthermore, a Section 71 Declaration of Use may be filed in combination with the Section 15 Declaration of Incontestability. This is because the time frame for filing the Section 71 and the Section 15 often coincides with one another.
What is Required to File the Section 71 Declaration of Use?
The Section 71 Declaration of Use requires the following:
- A verified statement that your trademark is in use in commerce in connection with the products/services recited in the registered extension of protection. Please note that use of your trademark solely in a foreign country does not constitute use in commerce.
- Submission of at least one current specimen of use per class of products/services recited in the registered extension of protection
- Payment of the USPTO filing fees (which are dictated by the number of classes listed in your registered extension of protection)
In the event that your trademark is not in use in connection with all of the products/services recited in the registered extension of protection, you must delete from the extension of protection all products/services for which you have no use (i.e. all products/services you’re no longer selling or distributing in the United States).
One important thing to point out is that even if your trademark isn’t in use in commerce, you may still be able to file the Section 71 Declaration if you can establish excusable nonuse of your trademark.
If your Section 71 Declaration of Use satisfies all legal requirements, then the USPTO will accept it and your registered extension of protection in the United States will be maintained. Conversely, if it doesn’t meet all of the requirements, then the USPTO will send you a post-registration office action explaining why your Section 71 couldn’t be approved (e.g. a trademark specimen refusal).
What If I Forget to File By the Deadline?
Owners of registered extensions of protection in the United States frequently fail to file the Section 71 Declaration of Use. This is because (1) they don’t even realize that the USPTO imposes such a requirement in order to maintain the extension of protection, or (2) they forget to set a reminder to file the Section 71 immediately after securing the extension of protection. Unfortunately, if you don’t file the Section 71 by the deadline, the USPTO will cancel the extension of protection and you’ll no longer have any of the rights associated with owning a registered extension of protection for your trademark in the U.S. Your only option in that case would be to file for a new extension of protection in the U.S.
Do You Need Help With the Section 71 Declaration of Use?
I’m experienced US trademark attorney Morris Turek. If you’re seeking prompt and professional assistance with filing the Section 71 Declaration of Use, please don’t hesitate to contact me for your complimentary consultation. You can give me a call at (314) 749-4059, send an email to morris@yourtrademarkattorney.com, or send a message to me through my contact form (below). I look forward to speaking with you soon.