TMEP 1613.04: Time for Filing §71 Affidavit or Declaration

This is the October 2015 Edition of the TMEP

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1613.04    Time for Filing §71 Affidavit or Declaration

37 C.F.R. §7.36(b)

During the following time periods, the holder of an international registration must file an affidavit or declaration of use or excusable nonuse, or the registered extension of protection will be cancelled under section 71 of the Act:

  • (1) On or after the fifth anniversary and no later than the sixth anniversary after 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.
  • (3) The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (b)(1) and (b)(2) of this section, with payment of the grace period surcharge per class required by section 71(a)(3) of the Act and §7.6.

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) and (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.

Example: For a registration issued on Nov. 1, 2005, a six-year affidavit may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period.

A §71 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 71 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.

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). 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 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). If an affidavit or declaration is filed before the period 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. 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.