Declaration of Use Required for U.S. International Registration Extensions

Since the Madrid Protocol became effective in the United States in November 2003, many non-U.S. companies have secured U.S. trademark registrations by extending their international registrations into the U.S. As the fifth anniversary of those registrations nears, trademark owners and their counsel must be mindful of the Declaration of Use filing required to maintain U.S. trademark registrations.

Under U.S. law the owner of a trademark registration must file a Section 8 Declaration of Use between the fifth and sixth anniversary of the date the registration issued. Failure to file a Section 8 Declaration of Use results in cancellation of the U.S. registration. Although an international registration is renewed with WIPO, to maintain a U.S. extension the Declaration of Use must still be filed with the USPTO at this time, and also before each 10th anniversary of the registration date.

The Section 8 Declaration requires trademark owners to verify under oath that all of the goods and services listed in the registration are currently in use in the U.S. Such statement must be made with caution. Falsely or even mistakenly stating a good or service is in use when it is not makes the registration vulnerable to attack on the basis of fraud. So, registration owners are advised to review each good and service carefully. A specimen proving such use must also be provided. Only one specimen per class is required, regardless of how many goods or services are listed in each class.

A Section 15 Declaration may be filed with the Section 8 Declaration if the mark has been used in the U.S. continuously for five consecutive years after the registration issued and no action is final or pending before the USPTO or the courts involving rights in the mark. This Section 15 Declaration is not mandatory but it makes the registration conclusive proof in court of the registered mark’s validity, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the registered mark in commerce (subject to certain always available attacks such as genericness). Accordingly, we recommend filing Section 15 Declarations whenever possible.

If you have any questions, please contact your Lewis and Roca professional.

This Client Alert has been prepared by Lewis and Roca LLP for informational purposes only and is not legal advice. Readers should seek professional legal advice on matters involving these issues.

View the entire client alert in PDF format here.


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