Note: A Section 71 Declaration is for registrations of extensions of protection under the Madrid Protocol. If you filed a national application directly with the USPTO and not through the Madrid Protocol, you would file a Section 8 Declaration.
IMPORTANT: Evidence of use must be shown as to US commerce/commerce that can be regulated by US Congress. Subject to some very limited exceptions, use outside the USA generally does not qualify.
A Section 71 Declaration is a sworn statement filed by the owner of a registration that the mark is in use in commerce for all of the goods/services listed in the registration — or a special basis for excusable non-use is provided. Goods/services listed in the registration that are not in use or able to claim excusable non-use will be removed from the registration in connection with the Section 71 Declaration.
A Section 71 Declaration must be filed:
- between the fifth and sixth anniversary date of the issuance of the certificate of extension of protection (i.e. U.S. registration for a §66(a) application); and
- within the year before the end of every ten-year period after the anniversary date of the issuance of the certificate of extension of protection (i.e. U.S. registration for a §66(a) application).
- IMPORTANT: The owner of a registration under an extension of protection under the Madrid Protocol must also file a renewal of the underlying international registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the international registration.
A Section 71 Declaration filed between the fifth and sixth year after registration is often accompanied by a Section 15 Declaration of Incontestability.