Thursday, November 20, 2008

TTABlog Recommended Reading: "U.S. Declarations of Use for Madrid-Based Registrations"

The November 15, 2008 INTA Bulletin includes a helpful article on "U.S. Declarations of Use for Madrid-Based Registrations," by Joseph F. Schmidt, Julie A. Katz, and Michele S. Katz (pdf here). The authors point out that the deadlines for Section 71 Declarations of Use are based on the date of issue of the U.S. Extension of Protection and not on the International Registration date. As a consequence, the 10-year renewal for a Madrid Extension of Protection (which is based on the I.R. date) will not be due at that same time as the 10-year Declaration of Use.


A foreign owner unfamiliar with the particulars of U.S. law may be surprised that maintenance of its U.S. Extension of Protection requires more than just timely renewal of the corresponding International Registration.

The article also points out that (unlike the Section 8 Declaration) there is no six-month grace period for the Section 71 Declaration of Use. As to the 10-year Declarations of Use, it must be filed within the six-month period before the 10th anniversary, or within a three-month grace period thereafter.

I note that, although the Madrid provisions came into effect in the U.S. in November 2004, the first U.S. Extension of Protection under the Madrid Protocol provisions was issued on February 1, 2005 [See TTABlog posting here]. And so the first Section 71 Declaration of Use for a Madrid-based U.S. Extension of Protection will be due no earlier than February 1, 2010, and could be filed as late February 1, 2011.

I do take issue with one assertion made in the article, in its discussion of the Incontestability Declaration (Section 73). The article states that "One of the benefits of incontestability is that it limits the grounds on which a proceeding to cancel a registration may be filed." I believe, however, that incontestability has nothing to do with TTAB proceedings. It is Section 14 that serves as a 5-year statute of limitations that cuts off certain grounds for cancellation, regardless of whether the registration in question has been made incontestable. For further discussion of this point, see the TTABlog posting here.

Text Copyright John L. Welch 2008.

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