Trademark Blog

What is the Section 71 Declaration of Use?

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.

What is the Section 8 Declaration of Use for a Registered Trademark?

Section 8 Declaration of Use

The Section 8 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a trademark registration. The Section 8 only applies to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration). If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would need to file the Section 71 Declaration of Use rather than the Section 8 Declaration of Use.

What is a Geographically Deceptively Misdescriptive Trademark?

geographically deceptively misdescriptive

A geographically deceptively misdescriptive trademark (which is different than a primarily geographically descriptive trademark) is ineligible for federal registration with the United States Patent and Trademark Office (USPTO) on either the Principal Register or Supplemental Register. The Lanham Act (which governs trademark registration in the US) specifically prohibits the registration of trademarks that are “primarily geographically deceptively misdescriptive” of the products/services with which they are used.

What is Acquired Distinctiveness for Purposes of Trademark Registration?

acquired distinctiveness

The concept of “acquired distinctiveness” (also referred to as “secondary meaning”) is extremely important when it comes to registering a non-distinctive trademark with the United States Patent and Trademark Office (USPTO). The following are common examples of non-distinctive trademarks:

Merely descriptive trademarks
Trademarks that are primarily merely surnames
Deceptively misdescriptive trademarks
Primarily geographically descriptive trademarks

Non-distinctive trademarks are normally only eligible for registration on the Supplemental Register (as opposed to the Principal Register). But, there are circumstances under which non-distinctive marks can be registered on the Principal Register. Those circumstances have to do with the concept of acquired distinctiveness under what is known as Section 2(f) of the Trademark Act.

What is a Surname Trademark Refusal by the USPTO?

Surname

A trademark that is primarily merely a surname is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has acquired distinctiveness or “secondary meaning” in the minds of the purchasing public. A “surname” is also often referred to as a “last name” or “family name.” Some very common examples of surnames include “Smith,” “Johnson,” “Williams,” and “Jones.” However, there are millions of other surnames among the US population, many of which are shared by only a handful of people. As such, it’s not always clear when a trademark would be considered primarily merely a surname.