If you obtained U.S. trademark protections through the Madrid Protocol, you may be wondering when and how to renew your valuable US trademark registration. Between five and six years from the date your trademark was registered by the USPTO, you will need to submit a Section 71 Declaration of Use, and, if you meet the requirements, you may also file a Section 15 Declaration of Incontestability. Because these two declarations are so often filed together, the USPTO has created a combined filing for both Section 71 and Section 15.
It is important to note that this renewal requirement in the United States is in addition to renewal requirements by the World Intellectual Property Organization (known as “WIPO). When a trademark is registered via the Madrid Protocol, WIPO provides a registration of its own that must be renewed every 10 years. In addition to the WIPO requirement, the United States requires a separate renewal be filed to prove that the trademark is being used “in commerce” in the United States.
An Overview of Both Section 71 and Section 15 Declarations
In order to maintain the valuable protection that a federally registered trademark in the US provides, all trademark owners must renew their trademarks periodically, within the timelines set by the United States Patent and Trademark Office (known as the “USPTO”). A Section 71 Declaration of Use is the form used to file renewals and document use for all trademark owners that filed for U.S. trademark protections through the Madrid Protocol. (Learn more about the Madrid Protocol) U.S. citizens and foreign trademark owners that filed directly with the USPTO will renew trademarks using a Section 8 Declaration of Use.
A Section 71 Declaration of Use will need to be filed between five and six years from the date of approval, and then again between the ninth and tenth year, and every ten years after that. The USPTO now offers a six-month grace period after the deadline in which you can still file your declaration. The cost to file a Section 71 Declaration alone is $225 per class. However, if you miss the filing window and instead file during the grace period, you will pay an additional $100 per class. Failing to file will result in cancellation of your trademark registration and protections within the United States.
A Section 15 Declaration of Incontestability is a valuable declaration for your brand, that, if approved by the USPTO, will prohibit outside parties from challenging your trademark’s validity within the United States in most circumstances. In order to file a Section 15 Declaration of Incontestability, you will need to document that you have been using the mark continuously for five consecutive years. You will also need to declare that there are no pending proceedings involving your trademark and no court decisions affecting the ownership of the mark. The cost to file a Section 15 Declaration alone is $200 per class.
How and When to Submit a Combined Section 71 and 15 Declaration
Because these declarations are often filed simultaneously, the USPTO has offered a combined filing. You will need to submit your combined declaration, specimen of use, and filing fees between the fifth and sixth year following the approval of your trademark registration. The cost of a combined Section 71 and 15 Declaration is $425 per class, but you’ll pay an additional $100 per class if you miss the filing window and instead file during the six-month grace period.
If you have not yet used your mark for five consecutive years, you will not be able to file a Section 15 Declaration of Incontestability. However, you will still need to file a separate Section 71 Declaration of Use. Then, be sure to file a Section 15 Declaration of Incontestability when five years of consecutive use has been achieved so that you can obtain its valuable protections.
Filing a Combined Section 71 and 15 Declaration
Once a trademark registration has been obtained, the work of a trademark owner doesn’t stop. Not only will you need to monitor your trademark’s use and take legal action against potential infringers, you’ll also need to meet renewal deadlines and strengthen your protections through declaring incontestability. The process to renew your trademark and file a combined Section 71 and 15 Declaration can be tedious, but it’s made easier when an experienced trademark attorney is involved. Your attorney will monitor important deadlines and ensure that your renewal is complete within the appropriate window and your valuable incontestable status is approved. Contact Gerben IP today to begin the process to file a combined Section 71 and 15 Declaration.