TMEP 1904.07(b): Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration

This is the October 2015 Edition of the TMEP

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1904.07(b)    Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration

Invalidation may occur due to the holder’s failure to timely file and meet the requirements of an affidavit or declaration under §71 of the Trademark Act, showing use of the registered mark in commerce in the United States. See 15 U.S.C. §1141k; 37 C.F.R. §7.36–.40; TMEP §§1613, 1613.04–1613.05, 1904.10. Failure to timely file the §71 affidavit or declaration is a statutory requirement, and the Director has no authority to waive the deadline for filing. See 15 U.S.C. §1141k; TMEP §1613.04. The USPTO typically waits until about one month after the expiration of the grace period before automatically cancelling the registered extension of protection, in order to avoid inadvertent cancellation of a registration due to a delay in entering a timely filed §71 affidavit or declaration into the USPTO records.

If a timely filed §71 affidavit or declaration does not meet the requirements for filing and is found unacceptable, the USPTO will issue an Office action notifying the holder of the refusal and stating the reasons the affidavit or declaration is deficient. Failure to timely respond to the Office action or failure to timely correct the deficiencies stated in the Office action will result in cancellation of the registered extension of protection to the United States. 37 C.F.R. §7.39; TMEP §1613.15–1613.17(c).

Once the registration is cancelled, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation.

In a registered extension of protection for which an acceptable §71 affidavit or declaration was not filed, if the holder seeks to expedite cancellation, the holder may request in writing that the USPTO expedite the processing of the cancellation of the registered extension of protection. The request should be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner, and should specifically state that an acceptable §71 affidavit or declaration was not filed on or before the end of the grace period. Such a request should be directed to the Post Registration Section; if it is sent to the examining attorney, the examining attorney should forward it to the Supervisor of the Post Registration Section.

See TMEP §§1613–1613.19 for detailed information about §71 affidavits or declarations.