1601.01 Registrations Now Being Issued

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.

1601.02 Repeal of Prior Acts

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  Most Acts relating to trademarks that existed prior to the Act of 1946 were repealed as of the effective date of the Act of 1946.  Repealed Acts include the Act of 1881, the Act of 1905, the Act of 1920, and the amendment entitled “Act of June 10, 1938.”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 .

1601.03 Additional Registration Under Act of 1946

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.

1601.04 1881 and 1905 Act Registrations

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.

1601.05 1920 Act Registrations

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.

1601.06 Registrations Issued Under Prior Classification Systems

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 .   See 37 C.F.R. §2.84(e)(3) ; TMEP §1609.04 .

1601.07 Form of Copies of Registrations

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.

1602.01 Act of 1946, as Amended

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.

1602.02 Acts of 1881 and 1905

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) .

1602.03 Act of 1920

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) .

1602.04 Trademark Law Treaty Implementation Act Changes

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.

1603.01 Notification and Publication of Mark in Trademark Official Gazette

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 .

1603.02 Cancellation and Incontestability

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 .

1603.03 Affidavits or Declarations of Use in Commerce Required

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 .

1604.01 Registrations to Which §8 Affidavit or Declaration Pertains

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) .

1604.02 Notice of When Affidavit or Declaration Is Due

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 e-mail reminder of USPTO maintenance filing deadlines will be sent to a trademark owner’s e-mail address with the USPTO (including an e-mail address authorized in an application filed before February 15, 2020). To ensure that the e-mail is received and the correspondence e-mail 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 e-mail 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.

1604.03 Form for Filing §8 Affidavit or Declaration

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.

1604.04 Time for Filing §8 Affidavit or Declaration

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:

• (1) on or after the fifth anniversary and no later than the sixth anniversary of the date of registration or date of publication under §12(c) of the Act; and
• (2) within the year before the end of every ten-year period after the date of registration.

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.

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.

1604.05   Requirements for §8 Affidavit or Declaration

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.

1604.06 Fees for §8 Affidavit or Declaration

1604.07 Ownership and Who May File §8 Affidavit or Declaration

1604.08 Execution of Affidavit or Declaration

1604.09 Goods/Services/Classes Set Forth in §8 Affidavit or Declaration

1604.10 Use in Commerce

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:

• (1) If the §8 affidavit or declaration was filed during the sixth year after the date of registration or publication under §12(c) of the Act, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization before the expiration of the sixth year after the date of registration or publication under §12(c), if accurate; or
• (2) If the §8 affidavit or declaration was filed within one year before the end of any ten-year period after the date of registration, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization within one year before the end of the ten-year period after the date of registration, if accurate; or
• (3) If the §8 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization before the expiration of the grace period, if accurate.

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.

1604.11 “Excusable Nonuse” of Mark

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 Trademark 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., 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 owner’s control or “forced by outside causes.” 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 §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, 14 USPQ2d 1390 (Fed. Cir. 1990); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd. , 126 USPQ2d 1526, 1533 (TTAB 2018); Exec. Coach Builders, Inc. v. SPV Coach Co. , 123 USPQ2d 1175 (TTAB 2017); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997).

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:

• Business Decision.   Nonuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.
• Decreased Demand.  Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse.  The purpose of the requirement for an affidavit or declaration of use or excusable nonuse is to eliminate registrations of marks that are not in use due to ordinary changes in social or economic conditions.   See In re Conusa Corp., supra; In re Parmalat S.p.A ., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharm. Prod., Inc ., supra; Ex parte Denver Chem. Mfg. Co ., supra.
• Trade Embargo or Other Circumstance Beyond Owner’s Control.  Nonuse may be considered excusable where the owner of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
• Sale of a Business.  Temporary nonuse due to the sale of a business may be considered excusable.
• Retooling.  The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time.  However, nonuse due to retooling is excusable only if the owner shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market.   In re New Eng. Mutual Life Ins. Co ., 33 USPQ2d 1532 (Comm’r Pats. 1991).
• Orders on Hand.  If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
• Illness, Fire, and Other Catastrophes.  Illness, fire, and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use.  Such nonuse is often excusable.  However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse; the owner must show that the business is an operation that could not continue without his or her presence.   New Eng. Mutual Life Ins., supra.
• Negotiations with Distributors.  A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the nonuse.   In re Parmalat, supra; In re Moorman, supra .
• Use in Foreign Country.  Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the U.S. Congress.   In re Conusa, supra.
• Use of Mark on Different Goods/Services.  Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark.   Ex parte Kelley-How-Thomson Co., supra.
• Use of Mark in Another Form.  Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue.   In re Cont’l Distilling Corp ., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958) .

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.

1604.12 Specimen Showing Current Use of Mark in Commerce

1604.13 Differences in the Mark as Used on the Specimen and the Mark as Registered

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.

1604.14 Designation of Domestic Representative by Foreign Owner

An owner that is not domiciled in the United States may file a document designating the name, e-mail 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.

1604.15 Office Actions and Notices Regarding Affidavit or Declaration

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 e-mail 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.

1604.16 Response to Office Action

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.

1604.17 Correction of Deficiencies in §8 Affidavit or Declaration

1604.18 Petition Under 37 C.F.R. §2.146

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.

1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application

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.

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 e-mail 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.

1604.20 Additional Requirements for §8 Affidavits or Declarations Pertaining to Collective Marks

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:

• (1) A statement that the owner is exercising legitimate control over the use of the mark in commerce ( see TMEP § 1604.20(a) ); and
• (2) If the registration issued from an application based solely on §44 of the Act, a statement specifying the nature of the owner’s control over the use of the mark by the members in the first §8 affidavit or declaration filed with the USPTO ( see TMEP § 1604.20(b) ).

37 C.F.R. §2.161(a)(8)(i)-(ii) .

1604.21 Additional Requirements for §8 Affidavits or Declarations Pertaining to Certification Marks

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:

• (1) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the registration ( see 37 C.F.R. §2.45(a)(4)(i)(B) ; TMEP §1604.21(a) );
• (2) A statement that the owner is exercising legitimate control over the use of the mark in commerce ( see TMEP §1604.21(b) );
• (3) A 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) ; TMEP §1604.21(c) ); and
• (4) 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 ( see 37 C.F.R. §2.45(a)(4)(i)(C) ; TMEP §1604.21(d) ).

37 C.F.R §2.161(a)(9)(i)-(iii) .

1605.01 Registrations to Which §15 Affidavit or Declaration Pertains

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.

1605.02 Form for Filing Affidavit or Declaration of Incontestability

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 e-mail acknowledgement of receipt, which includes a summary of the filed information.

1605.03 Time for Filing Affidavit or Declaration of Incontestability

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 unless a §8 or §71 affidavit or declaration is pending or 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, the owner may request that the §15 affidavit or declaration be treated as a deficient §8 or §71 affidavit or declaration. See TMEP §1604.04 regarding the deadline for filing a §8 affidavit or declaration, §1604.05 regarding the requirements for filing a §8 affidavit or declaration, §1613.04 regarding the deadline 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.

1605.04 Requirements for Affidavit or Declaration of Incontestability

Section 15 of the Act refers to the affidavit or declaration merely as “setting forth” the specified information.   See 15 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.

1605.05 Combining §15 Affidavit or Declaration with §8 Affidavit or Declaration

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 e-mail 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.

1605.06 Section 14 Limitation Is Independent of §15 Affidavit or Declaration

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) .

1606.01 Which Registrations Must Be Renewed Under §9

1606.02 Requirements for Renewal Under §9

1606.03 Time for Filing §9 Renewal Application

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.

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 e-mail 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.”).

1606.04 Form for Filing §9 Renewal Application

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.

1606.05 Fees for §9 Renewal Applications

1606.06 Ownership and Who May File §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.

1606.07 Execution of §9 Renewal Application

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.

1606.08 Goods/Services/Classes Set Forth in §9 Renewal Application

1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required

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 .

1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal Under §9

A renewal applicant who is not domiciled in the United States may file a document designating the name, e-mail 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.

1606.11 Office Actions and Notices Regarding §9 Renewal Application

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 e-mail 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.

1606.12 Response to Office Action

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.

1606.13 Correction of Deficiencies in §9 Renewal Applications

1606.14 Petition to the Director Under 37 C.F.R. §2.146

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.

1606.15 Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse

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.

1609.01 Amendment of Registration – In General

1609.02 Amendment of Mark

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 IB’s Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2008) (“Guide to International Registration”) , B.II.72.02, provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time.  If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application.  This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration….

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 e-mail 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) .

1609.03 Amendment of Identification

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.   See 37 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.   See 37 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) .

1609.04 Amendment of Classification

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) .

1609.05 Disclaimer of Mark and Claim of Acquired Distinctiveness

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) .

1609.06 Territorial Restrictions

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 .

1609.07 Dates of Use

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:

• If the application for the registration was based on use in commerce under 15 U.S.C. §1051(a) , the registration cannot be corrected to specify a date of use that is later than the application filing date ( see 37 C.F.R. §2.71(c)(1) );
• If the application for the registration was based on intent-to-use under 15 U.S.C. §1051(b) in which a statement of use was filed under 15 U.S.C. §1051(d) , the registration cannot be corrected to specify a date of use that is later than the statutory deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use) ( see 37 C.F.R. §2.71(c)(2) );
• If the application for the registration was based on intent-to-use under 15 U.S.C. §1051(b) in which an amendment to allege use was filed under 15 U.S.C. §1051(c) , the registration cannot be corrected to specify a date of use that is later than the filing date of the amendment to allege use ( see TMEP §903.04 ); and
• The date of first use in commerce may not be earlier than the date of first use anywhere ( see TMEP §903.03 ).

1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration

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) .

1609.09 Amendment of Registered Mark from Supplemental to Principal Register Not Permitted

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.

1609.10 Correction of Mistake in Registration

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 sends an updated registration certificate to the owner of record, and updates USPTO records to show the correction.

1609.11 Change of Owner’s Address Can Be Filed Through TEAS

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.

1609.12 Amendment of Certification Statement for Certification Marks

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) .

1612.01 Correspondence E-mail and Domicile Address of Registrant

The requirement for an owner’s e-mail 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(a)(i) regarding an owner’s e-mail address and §1612(a)(ii) regarding an owner’s domicile address.

1612.02 Representation Based on Domicile of Mark Owner

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.

1612.03 Attorney Identification Information

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, e-mail 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) .

E-mail Address. A valid e-mail address must be provided for the registrant’s attorney, if one is appointed, that differs from the registrant’s e-mail address in order for the USPTO to contact the registrant if representation ends. In this case, the TEAS forms will require e-mail addresses for both the registrant and its attorney. The registrant may provide an e-mail address of its choice, however, the listed primary correspondence e-mail address of the registrant’s attorney cannot be identical to the registrant’s e-mail address, even for in-house counsel and attorneys representing themselves in a trademark matter. Third-party e-mail addresses may not be used as the primary e-mail address for trademark correspondence. The registrant must maintain a current and accurate e-mail 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.

1613.01 Registrations to Which §71 Affidavit or Declaration Pertains

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.

1613.02 Notice of When Affidavit or Declaration Is Due

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 e-mail reminder of USPTO maintenance filing deadlines will be sent to a trademark holder’s current e-mail address with the USPTO (including an e-mail address authorized in an application filed before February 15, 2020). When a holder’s e-mail address changes, the holder must use the Trademark Electronic Application System (TEAS) Change Address or Representation Form to promptly update the e-mail 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 e-mail reminder. See 37 C.F.R. §§7.36(b) , 7.38 .

1613.03 Form for Filing §71 Affidavit or Declaration

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.

1613.04 Time for Filing §71 Affidavit or Declaration

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:

• (1) on or after the fifth anniversary and no later than the sixth anniversary of the date of registration in the United States; and
• (2) within the year before the end of every ten-year period after the date of registration in the United States.

37 C.F.R. §7.36(b)(1)-(2) .

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.

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.

1613.05   Requirements for §71 Affidavit or Declaration of Use or Excusable Nonuse

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.

1613.06 Fees for §71 Affidavit or Declaration

1613.07 Ownership and Who May File §71 Affidavit or Declaration

1613.08 Execution of Affidavit or Declaration

1613.09 Goods/Services/Classes Set Forth in §71 Affidavit or Declaration

1613.10 Use in Commerce

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:

• (1) If the §71 affidavit or declaration was filed during the sixth year after the date of registration in the United States, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization before the expiration of the sixth year after the date of registration, if accurate; or
• (2) If the §71 affidavit or declaration was filed 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 must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization within one year before the end of the ten-year period after the date of registration, if accurate; or
• (3) If the §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services/collective membership organization before the expiration of the grace period, if accurate.

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.

1613.11 “Excusable Nonuse” of Mark

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 Trademark 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).

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:

• Business Decision.   Nonuse related to a business decision is not beyond the holder’s control and does not excuse nonuse.
• Decreased Demand.  Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse.  The purpose of the requirement for an affidavit or declaration of use or excusable nonuse is to eliminate registrations of marks that are not in use due to ordinary changes in social or economic conditions.   See In re Conusa Corp., supra; In re Parmalat S.p.A ., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharm. Prod., Inc ., supra; Ex parte Denver Chem. Mfg. Co ., supra.
• Trade Embargo or Other Circumstance Beyond Holder’s Control.  Nonuse may be considered excusable where the holder of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
• Sale of a Business.  Temporary nonuse due to the sale of a business may be considered excusable.
• Retooling.  The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time.  However, nonuse due to retooling is excusable only if the holder shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market.   See In re New Eng. Mutual Life Ins. Co., 33 USPQ2d 1532 (Comm’r Pats. 1991).
• Orders on Hand.  If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
• Illness, Fire, and Other Catastrophes.  Illness, fire, and other catastrophes may create situations of temporary nonuse, with the holder being able to outline arrangements and plans for resumption of use.  Such nonuse is often excusable.  However, a mere statement that the holder is ill and cannot conduct his or her business will not in itself excuse nonuse; the holder must show that the business is an operation that could not continue without his or her presence.   See New Eng. Mutual Life Ins., supra.
• Negotiations with Distributors.  A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the nonuse.   See In re Parmalat, supra; In re Moorman, supra .
• Use in Foreign Country.  Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress.   See In re Conusa, supra.
• Use of Mark on Different Goods/Services.  Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark.   See Ex parte Kelley-How-Thomson Co., supra.
• Use of Mark in Another Form.  Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue.   See In re Cont’l Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958).

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.

1613.12 Specimen Showing Current Use of Mark in Commerce

1613.13 Differences in the Mark as Used on the Specimen and the Mark as Registered

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.

1613.14 Designation of Domestic Representative by Foreign Holder

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, e-mail 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.

1613.15 Office Actions and Notices Regarding Affidavit or Declaration

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 e-mail 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.

1613.16 Response to Office Action

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.

1613.17 Correction of Deficiencies in §71 Affidavit or Declaration

1613.18 Petition Under 37 C.F.R. §2.146

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.

1613.19 Section 71 Affidavit or Declaration Combined with Section 15 Affidavit or Declaration

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.

1613.20 Additional Requirements for §71 Affidavits or Declarations Pertaining to Collective Marks

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:

• (1) A statement that the holder is exercising legitimate control over the use of the mark in commerce ( see TMEP §1613.20(a) ); and
• (2) A statement specifying the nature of the holder’s control over the use of the mark by the members in the first §71 affidavit or declaration filed with the USPTO ( see TMEP §1613.20(b) ).

37 C.F.R §7.37(a)(8)-(8)(ii) .

1613.21 Additional Requirements for §71 Affidavits or Declarations Pertaining to Certification Marks

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:

• (1) A copy of the certification standards governing use of the certification mark on or in connection with the goods or services specified in the registration ( see 37 C.F.R. §2.45(a)(4)(i)(B) ; TMEP §1613.21(a) );
• (2) A statement that the holder is exercising legitimate control over the use of the mark in commerce ( see TMEP §1613.21(b) );
• (3) A statement specifying what the holder is certifying about the goods or services in the registration ( see 37 C.F.R. §2.45(a)(4)(i)(A) ; TMEP §1613.21(c) ); and
• (4) 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 ( see 37 C.F.R. §2.45(a)(4)(i)(C) ; TMEP §1613.21(d) ).

37 C.F.R §7.37(a)(9)-(9)(iii) .

1613.22 Post Registration Audit

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.

1615.01 Division of Registration Based on Application Under §1 or §44 of the Trademark Act

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.

1615.02 Division of Registered Extension of Protection

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.