Friday, January 29, 2010

Senate Passes Bill to Provide Usual Grace Periods for Section 71 Declarations of Use

The United States Senate yesterday passed a bill (here) introduced by Vermont Senator Patrick Leahy to amend the Trademark Act in order to fix an anomaly concerning the time periods for filing declarations of use under Section 71 of the Act (in connection with Madrid Extensions of Protection).

In contrast to Section 8 of the Act, Section 71 currently does not provide any grace period for the sixth-year Section 71 declaration of use. And as to the 10-year declarations of use, Section 71 requires that they be filed within the six-month period before the 10th anniversary, or within a three-month grace period thereafter.

This new bill will amend Section 71 to provide the same filing periods and grace periods as does Section 8: one year before the anniversary date or within six months thereafter.

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]. Therefore, under current law, 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 as February 1, 2011. Presumably Section 71 will be amended before then, and a six-month grace period will apply.

Text Copyright John L. Welch 2010.


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