T.M.E.P. § 1613
Affidavit of Use in Commerce or Excusable Nonuse Under ¤71 of the Trademark Act
This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.
For more information on trademark law, please see the Trademark Section of BitLaw.
1613 Affidavit of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act
Under §71 of the Trademark Act, 15 U.S.C. 1141k, a registered extension of protection to the United States will be cancelled unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse ("§71 affidavits"). The affidavits must include (1) a verified statement by the holder that the mark is in use in commerce, and a specimen of use, or (2) a verified statement setting forth that any nonuse is due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. These affidavits must be filed:
(1) Between the fifth and sixth year after the date on which the USPTO issues the certificate of extension of protection; and
(2) Within the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a three-month grace period with an additional surcharge.
Section 71 provides a 3-month grace period for filing the ten-year §71 affidavit with an additional surcharge. There is no grace period for filing the six-year §71 affidavit. Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period. The requirements for a §71 affidavit are set forth in 37 C.F.R. 7.37.
Since the §71 affidavit cannot be filed until five years after the USPTO registers an extension of protection, the USPTO will not accept these affidavits until after November 2, 2008.