TMEP 1605.03: Time for Filing Affidavit or Declaration of Incontestability

This is the October 2015 Edition of the TMEP

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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the affidavit or declaration contained an inaccuracy, the owner may not request that the affidavit or declaration be withdrawn and the fee refunded.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 transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. 37 C.F.R. §2.195(a)(2).

Section 15 affidavits or declarations filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197. See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

The USPTO will not acknowledge a §15 affidavit or declaration unless a §8 affidavit or declaration is pending or has been accepted by the Office. If a §15 affidavit or declaration is filed alone during the statutory period for filing the §8 affidavit or declaration, the Post Registration staff will notify the owner that the registration will be cancelled without an acceptable §8 affidavit or declaration. In response to such notification, the owner may request that the §15 affidavit or declaration be treated as a deficient §8 affidavit or declaration. See TMEP §1604.04 regarding the deadline for filing a §8 affidavit or declaration and TMEP §1604.05 regarding the requirements for filing a §8 affidavit or declaration.

See TMEP §1605.05 regarding a combined affidavit or declaration under §§8 and 15 of the Act.