T.M.E.P. § 1604.17
Correction of Deficiencies in ¤8 Affidavit

Executive summary:

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1604.17 Correction of Deficiencies in §8 Affidavit

37 C.F.R. 2.164. Correcting deficiencies in affidavit or declaration.

(a) If the owner of the registration files an affidavit or declaration within the time periods set forth in section 8 of the Act, deficiencies may be corrected, as follows:

(1) Correcting deficiencies in affidavits or declarations timely filed within the periods set forth in sections 8(a) and 8(b) of the Act. If the owner timely files the affidavit or declaration within the relevant filing period set forth in section 8(a) or section 8(b) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge. Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 8(c)(2) of the Act and §2.6.

(2) Correcting deficiencies in affidavits or declarations filed during the grace period. If the affidavit or declaration is filed during the six-month grace period provided by section 8(c)(1) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 8(c)(2) of the Act and §2.6.

(b) If the affidavit or declaration is not filed within the time periods set forth in section 8 of the Act, or if it is filed within that period by someone other than the owner, the registration will be cancelled. These deficiencies cannot be cured.

1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act

If the owner of the registration timely files the affidavit or declaration during the periods set forth in §§8(a) and 8(b) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Trademark Act, or within one year before the end of any ten-year period after the date of registration), deficiencies may be corrected within the relevant period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the relevant period with payment of the deficiency surcharge required by §8(c)(2) of the Act. 37 C.F.R. 2.164(a)(1).

Any deficiency must be cured within the set period for response to the Post Registration examiner's Office action, i.e., within six months of the mailing date of the action, or before the end of the relevant filing period set forth in §8 of the Act, whichever is later. 37 C.F.R. 2.163(b). See TMEP §1604.16.

1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period

If the owner of the registration files the affidavit or declaration during the six-month grace period under §8(c)(1) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §8(c)(2) of the Act. 37 C.F.R. 2.164(a)(2).

Any deficiency must be cured within six months of the mailing date of the Post Registration examiner's Office action. 37 C.F.R. 2.163(b). See TMEP §1604.16.

1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period

The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed before expiration of the grace period set forth in §8(c)(1) of the Act, or if the affidavit or declaration is filed by someone other than the current owner of the registration. 37 C.F.R. 2.164(b). Untimely filing and filing in the name of the wrong party cannot be cured after expiration of the grace period, even with a deficiency surcharge. In re Media Central IP Corp., 65 USPQ2d 1637 (Dir USPTO 2002); In re ACE III Communications, Inc., 62 USPQ2d 1049 (Dir USPTO 2001). See TMEP §1604.04 regarding the deadline for filing the affidavit, and TMEP §§1604.07 et seq. regarding ownership.