Overview of Both Section 71 and Section 15 Declarations2 (2)

Filing a successful trademark registration can be an important moment for a business, but the work of a trademark owner does not end once the application has been accepted. Some trademark owners may need to file Section 71 and Section 15 declarations in order to continue protecting the intellectual property of the trademark. Trademark holders who obtained trademark protection through the Madrid Protocol are required to submit a Section 71 Declaration of Use form, and in some cases, a Section 15 Declaration of Incontestability should also be filed alongside the Section 71 form.

Managing a trademark can be a complicated process, which is why many trademark holders turn to intellectual property lawyers for assistance. If you have questions regarding Section 71 and Section 15 declarations or other trademark matters, contact the team of experienced intellectual property lawyers at War IP Law, PLLC at (202) 800-3754.

The Madrid Protocol for Trademarks

The Madrid Protocol allows trademark holders to seek international protection in multiple countries or regions through the same trademark application. Those who apply for protection under the Madrid Protocol can receive a bundle of trademark registrations for separate jurisdictions. This system is much more convenient than applying for separate trademark registrations in each country or jurisdiction.

A trademark owner with an existing trademark application or registration in a member jurisdiction of the Madrid Protocol may secure an international registration for their trademark through the World Intellectual Property Organization (WIPO). The owner then has the option to extend the protections included under this international registration to one or more jurisdictions with membership in the Madrid Protocol. Trademark protection can be extended to include all member jurisdictions by filing a single application in one jurisdiction with one payment of fees.

What is a Section 71 Trademark Declaration?

The owners of Madrid Protocol trademarks are required to submit a Section 71 Declaration of Use form between five and six years after the trademark was registered with the United States Patent and Trademark Office. Additionally, a Section 71 form must be filed again between the ninth and tenth year and every ten years after that. This declaration states that the trademark is currently in use in commerce within the United States, or that the trademark is not in use because of special circumstances that excuse the use of the trademark.

While these requirements are firm, the USPTO does offer a six-month grace period for trademark owners that have missed the Section 71 declaration deadline. Filing a Section 71 Declaration costs $225 per trademark class, but there is an additional $100 per class charge for those that file within the grace period. Those who fail to file a Section 71 Declaration by the end of the grace period will see their trademark registration and protections canceled within the United States.

Section 15 Trademark Declarations

The Section 15 Declaration of Incontestability allows trademark holders to protect themselves from other parties challenging the validity of their trademark within the United States. Trademark holders who wish to file a Section 15 Declaration must prove with documentation that they have been using the trademark continuously for five straight years. The trademark holder must also declare that the trademark has no pending proceedings or court decisions that affect the ownership of the trademark. Filing a Section 15 Declaration on its own costs $200 per class.

If the USPTO accepts the Section 15 Declaration, the trademark will be considered incontestable. This means that third parties cannot challenge aspects of the trademark registration, such as the validity of the trademark. If you have any questions about a Section 15 trademark declaration, contact the experienced trademark attorneys at War IP Law, PLLC today to ensure your intellectual property rights remain protected. 

Submitting a Combined Section 71 and 15 Declaration

Section 71 and Section 15 declarations are often filed together through a combined declaration. Trademark owners who opt for the combined filing are required to submit their combined declaration, the specimen of use, and filing fees between the fifth and sixth year following the approved registration of the trademark. The combined Section 71 and 15 Declaration costs $425 per class, with an additional fee of $100 per class for those who file late but within the USPTO’s grace period.

The combined declaration of use and incontestability form may only be filed if the trademark owner has continuously used a trademark registered on the Principal Register in commerce for five consecutive years after the trademark was registered. The owners of trademarks that have not been continuously used for five straight years are still required to file a Section 71 Declaration.

Section 8 Declaration of Use

United States citizens and foreign trademark owners who filed their applications directly with the USPTO, rather than through the Madrid Protocol, are required to renew their trademarks through the Section 8 Declaration of Use form. Section 8 declarations must be filed alongside a specimen of use between 9 and 10 years after registering the trademark and every 10 years after the initial filing. Like Section 15 and 71 declarations, the USPTO offers a six-month grace period for those who file their Section 8 late, with an extra fee of $100 per class.

Consider Contacting an Experienced Trademark Lawyer for Legal Guidance

Protecting your intellectual property can be challenging. Filing a successful trademark registration is critical for this process, but is only the first step in a long process. Once a trademark has been accepted, the trademark owner must continue to monitor the use of their trademark and be prepared to take legal action against other entities that attempt to infringe on their intellectual property. Additionally, the trademark must be renewed and Section 71 and Section 15 declarations must be filed within the designated time frames.

Many trademark owners lack the time and expertise to manage their trademarks completely on their own. Instead, trademark owners often hire intellectual property lawyers for assistance in the numerous aspects of maintaining a trademark. At War IP Law, PLLC our team of dedicated intellectual property lawyers works tirelessly to ensure that the trademarks and other intellectual property of our clients are protected. For more information about how we can help your enterprise with trademarks and other intellectual property concerns, call our office today at (202) 800-3754.