As more trademark owners use the Madrid Protocol to extend their rights into foreign territories, the Protocol’s advantages and shortcomings are coming to light. One potential pitfall of particular note for owners of registered extensions of protection to the United States is beginning to take form on the horizon.

The United States imposes strict use requirements in connection with the maintenance and renewal of trademark registrations. These requirements differ greatly between registrations resulting from applications under §1 and §44 of the Trademark Act, and those resulting from Extensions of Protection under the Madrid Protocol (§66A).

Trademark practitioners are well aware of the requirements for filing Section 8 affidavits. Generally, the owner of a U.S. trademark registration must file a affidavit or declaration of continued use or excusable nonuse (Section 8 affidavit), on or after the fifth anniversary and no later than the sixth anniversary of the date of registration, and within the year before the end of every ten-year period after the date of registration. The registrant may also file the Section 8 affidavit within a grace period of six months after the expiration of the deadline, provided a surcharge is paid.

However, the above requirements do not apply to registered extensions of protection issued by the United States Patent and Trademark Office (“USPTO”) pursuant to the Madrid Protocol. The requirements for such registered extensions are very different than the requirements for registrations under §1 and §44, and merit close attention.

Under §71 of the Trademark Act, a registered extension of protection to the United States will be cancelled, unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse (“§71 affidavits”) with the USPTO. 37 C.F.R. §7.37 sets forth the requirements for a §71 affidavit. These affidavits must be filed:

(1) Between the fifth and sixth year after the date on which the USPTO issues the certificate of extension of protection; and

(2) Within the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a three-month grace period with an additional surcharge.

Section 71 provides a three-month grace period for filing the ten-year §71 affidavit with an additional surcharge, but there is no grace period for filing the six-year §71 affidavit.

Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period.

Section 71 affidavits cannot be filed until five years after the USPTO registers an extension of protection. Consequently, the USPTO will not accept these affidavits until after November 2, 2008, due to the timing of the adoption of the Protocol by the United States.

Normally, trademark owners or practitioners can reliably turn to the Trademark Manual of Examining Procedure (TMEP) for guidance with respect to maintenance and renewal requirements. But a close look at Section 1613 of the TMEP reveals a significant inconsistency.

TMEP 1613(2) states that the ten-year §71 affidavit is due “[w]ithin the six-month period preceding the end of every ten-year period after the date on which the USPTO issues the certificate of extension of protection, or within a 3-month grace period with an additional surcharge.”

The next sentence reads: “Section 71 provides a six-month grace period for filing the ten-year §71 affidavit with an additional surcharge. There is no grace period for filing the six-year §71 affidavit. Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period. The requirements for a §71 affidavit are set forth in 37 C.F.R. §7.37.” [Emphasis added]

This is incorrect. The grace period for the ten-year §71 affidavit is three months, not six.

Holders of extensions of protection need to be vigilant with respect to §71 requirements. Our firm is aware of a number of trademark law practice guides that either have incorrect information regarding §71 or simply do not mention §71 at all. Even the International Trademark Association’s own Practitioner’s Guide to the Madrid Protocol and Madrid Agreement errs by omission. The Guide contains no reference to the six-year §71 filing requirement. Moreover, we are aware that some trademark docketing software packages do not generate the correct deadlines for §71 filings.

What’s a holder of an extension of protection to do? Well…

· Be vigilant! Holders of extensions of protection in the U.S. under the Madrid Protocol are not only required to renew their International Registrations with the International Bureau, but they must also file §71 affidavits with the USPTO at specified times.

· File the six-year §71 affidavit between the fifth and sixth year after the extension of protection issued (Remember: No grace period!).

· File the ten-year §71 affidavit in the window of time beginning six-months preceding the end of every ten-year period after the date of issuance of the extension of protection, or within the three-month grace period.

· Renew the International Registration with the International Bureau

· And please don’t forget to actually use the mark in the United States.

Great thanks to William J. Morris III for first pointing out the pitfalls of §71 and encouraging the writing of this post.

UPDATE: Trademark prosecution guru, John Welch, has pointed out that although the USPTO will not accept §71 affidavits until after November 2, 2008, the first Section 66 extension of protection in the US was issued on Feb 1, 2005, and so the earliest date that a filing of a six-year §71 affidavit can occur is February 1, 2010. This does not diminish the importance of paying very close attention to these deadlines.