1613    Affidavit or Declaration of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act

15 U.S.C. §1141k  Duration, affidavits and fees.

  • (a) Time Periods for Required Affidavits.  Each extension of protection for which a certificate has been issued under section 69 shall remain in force for the term of the international registration upon which it is based, except that the extension of protection of any mark shall be canceled by the Director unless the holder of the international registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:
  • (1) Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of extension of protection.
  • (2) Within the 1-year period immediately preceding the expiration of 10 years following the date of issuance of the certificate of extension of protection, and each successive 10-year period following the date of issuance of the certificate of extension of protection.
  • (3) The holder may file the affidavit required under this section within a grace period of 6 months after the end of the applicable time period established in paragraph (1) or (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.
  • (b) Requirements for Affidavit.  The affidavit referred to in subsection (a) shall—
  • (1)(A) state that the mark is in use in commerce;
  • (B) set forth the goods and services recited in the extension of protection on or in connection with which the mark is in use in commerce;
  • (C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and
  • (D) be accompanied by the fee prescribed by the Director; or
  • (2)(A) set forth the goods and services recited in the extension of protection on or in connection with which the mark is not in use in commerce;
  • (B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
  • (C) be accompanied by the fee prescribed by the Director.
  • (c) Deficient Affidavit.  If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the holder of the international registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.
  • (d) Notice of Requirement.  Special notice of the requirement for such affidavit shall be attached to each certificate of extension of protection.
  • (e) Notification of Acceptance or Refusal.  The Director shall notify the holder of the international registration who files any affidavit required by this section of the Director's acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.
  • (f) Designation of Resident for Service of Process and Notices.  If the holder of the international registration of the mark is not domiciled in the United States, the holder may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the last designated address, or if the holder does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

Under §71 of the Trademark Act, 15 U.S.C. §1141k, 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 or declarations").  The purpose of the §71 affidavit or declaration is to remove marks that are no longer being used in commerce from the register.

1613.01   Registrations to Which §71 Affidavit or Declaration Pertains       

Section 71 of the Trademark Act applies only to registered extensions of protection of international registrations to the United States.  However, §8 of the Act, 15 U.S.C. §1058, requires periodic affidavits or declarations of use or excusable nonuse for registrations resulting from applications under §1 or §44 of the Trademark Act.  See TMEP §§1604 et seq . for further information about §8 affidavits or declarations.

1613.02   Notice of When Affidavit or Declaration Is Due

A statement noting the requirement for filing the affidavits or declarations of use or excusable nonuse under §71 of the Act is included on each certificate of registration as originally issued.  15 U.S.C. §1141k(d).  This is the only notice that the USPTO provides regarding this requirement.  The holder must file the affidavit or declaration within the time periods required by §71 of the Act regardless of whether the holder receives the notice.  37 C.F.R. §7.38.  The USPTO does not provide any reminder of the due date(s) of the affidavits or declarations.

1613.03   Form for Filing §71 Affidavit or Declaration

To expedite processing, it is recommended that the holder file the §71 affidavit or declaration through the Trademark Electronic Application System ("TEAS").  See TMEP §301 for more information about electronic filing.  Forms for filing affidavits or declarations of use or excusable nonuse under §71 are available through TEAS at http://www.uspto.gov.  Alternatively, the holder can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand delivered to the USPTO.

See TMEP §1613.04 regarding the deadline for filing the affidavit or declaration, and TMEP §1613.05 regarding the requirements for filing the affidavit or declaration.

1613.04   Time for Filing §71 Affidavit or Declaration

37 C.F.R. §7.36(b) 

During the following time periods, the holder of an international registration must file an affidavit or declaration of use or excusable nonuse, or the registered extension of protection will be cancelled under section 71 of the Act:

  • (1) On or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States; and
  • (2) Within the year before the end of every ten-year period after the date of registration in the United States.
  • (3) The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (b)(1) and (b)(2) of this section, with payment of the grace period surcharge per class required by section 71(a)(3) of the Act and §7.6.

Under §§71(a)(1) and (a)(2) of the Trademark Act, the holder of the international registration must file an affidavit or declaration of use or excusable nonuse:

    • (1) on or after the fifth anniversary and no later than the sixth anniversary of the date of registration in the United States; and
    • (2) within the year before the end of every ten-year period after the date of registration in the United States.  37 C.F.R. §7.36(b).

Under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3), the holder may file the affidavit or declaration within a grace period of six months after the expiration of the deadlines set forth in §§71(a)(1) and (a)(2) of the Act, 15 U.S.C. §§1141k(a)(1) and (a)(2), with an additional grace period surcharge.

Affidavits or declarations may be filed on the U.S. registration anniversary dates at the end of the fifth and sixth years, or at the end of the ninth and tenth years.

Example:  For a registration issued on Nov. 1, 2005, a six-year affidavit may be filed as early as Nov. 1, 2010, and may be filed as late as Nov. 1, 2011, before entering the six-month grace period.

A §71 affidavit or declaration filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.  37 C.F.R. §2.195(a)(2).

Section 71 affidavits or declarations filed on paper are considered timely if they are received in the USPTO by the due date or if they are mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197.  See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

If the holder of the registration does not file an affidavit or declaration of use or excusable nonuse before the end of the grace period, the registration will be cancelled.  37 C.F.R. §§7.36(b) and 7.39(d).  See TMEP §1613.07 regarding who may file a §71 affidavit or declaration.

The Director has no authority to waive the deadline for filing a proper affidavit or declaration of use of a registered mark under 15 U.S.C. §1141k.   See Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents and Trademarks. , 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit, Congress made no exception for the innocent or the negligent.  Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case."); In re Holland American Wafer Co ., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) ("Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.").

Premature Filing of §71 Affidavit or Declaration

The affidavit or declaration cannot be filed before the periods specified in §71(a) of the Act.  The purpose of the affidavit or declaration is to show that the mark is still in use in commerce within the relevant period, which cannot be done by an affidavit or declaration filed before that period.   Cf. In re Holland American Wafer Co ., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).  If an affidavit or declaration is filed before the period specified in §§71(a)(1) and (a)(2) of the Act, the USPTO will issue a notice advising the holder:  (1) that the affidavit or declaration is premature; (2) of the appropriate time for filing the affidavit or declaration; (3) that the fee(s) submitted will be held; and (4) that the holder may file a new affidavit or declaration at the appropriate time or may request a refund at any time.  There is no deficiency surcharge.  The prematurely filed affidavit or declaration will remain in the record for informational purposes only.  The holder of the registration must file a newly executed affidavit or declaration before the end of the grace period or the registration will be cancelled and the USPTO will refund the fees.

See TMEP §1613.08(b) regarding the date of execution of a §71 affidavit or declaration.

1613.05     Requirements for §71 Affidavit or Declaration of Use or Excusable Nonuse

37 C.F.R. §7.37  Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse.

A complete affidavit or declaration under section 71 of the Act must:

  • (a) Be filed by the holder of the international registration within the period set forth in §7.36(b);
  • (b) Include a statement that is signed and verified (sworn to) or supported by a declaration under §2.20 of this chapter by a person properly authorized to sign on behalf of the holder, attesting to the use in commerce or excusable nonuse of the mark within the period set forth in section 71 of the Act.  The verified statement must be executed on or after the beginning of the filing period specified in §7.36(b).  A person who is properly authorized to sign on behalf of the holder is:
  • (1) A person with legal authority to bind the holder; or
  • (2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the holder; or
  • (3) An attorney as defined in §11.1 of this chapter who has an actual written or verbal power of attorney or an implied power of attorney from the holder.
  • (c) Include the U.S. registration number;
  • (d)(1) Include the fee required by §7.6 for each class of goods or services that the affidavit or declaration covers;
  • (2) If the affidavit or declaration is filed during the grace period under section 71(a)(3) of the Act, include the grace period surcharge per class required by §7.6;
  • (3) If at least one fee is submitted for a multi-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied.  If the required fee(s) are not submitted within the time period set out in the Office action and the class(es) to which the original fee(s) should be applied are not specified, the Office will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class;
  • (e)(1) Specify the goods or services for which the mark is in use in commerce, and/or the goods or services for which excusable nonuse is claimed under §7.37(f)(2);
  • (2) Specify the goods or services being deleted from the registration, if the affidavit or declaration covers less than all the goods or services or less than all the classes in the registration;
  • (f)(1) State that the registered mark is in use in commerce on or in connection with the goods or services in the registration; or
  • (2) If the registered mark is not in use in commerce on or in connection with all the goods or services in the registration, set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark; and
  • (g) Include a specimen showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed under §7.37(f)(2).  When requested by the Office, additional specimens must be provided. The specimen must meet the requirements of §2.56 of this chapter.
  • (h) The Office may require the holder to furnish such information, exhibits, affidavits or declarations, and such additional specimens:
  • (1) As may be reasonably necessary to the proper examination of the affidavit or declaration under section 71 of the Act; or
  • (2) For the Office to assess the accuracy and integrity of the register.
  • (3) The provisions of paragraph (h)(2) of this section will no longer be applied after June 21, 2014.

1613.06   Fees for §71 Affidavit or Declaration

1613.06(a)   Filing Fee for Affidavit or Declaration

Under 15 U.S.C. §1141k(b) and 37 C.F.R. §7.37(d)(1), an affidavit or declaration of use or excusable nonuse must include the fee required by 37 C.F.R. §7.6 for each class of goods or services that the affidavit or declaration covers.  See TMEP §§1401.02 and 1401.04 et seq . regarding use of international classification to calculate fees due.

1613.06(b)   Grace Period Surcharge and Deficiency Surcharge

If the affidavit or declaration is filed during the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k (a)(3), it must include the grace period surcharge per class required by 37 C.F.R. §7.6.

Section 71(c) of the Trademark Act, 15 U.S.C. §1141k(c), requires a "deficiency surcharge" for correcting deficiencies in the affidavit or declaration after expiration of the deadlines specified in §71.  See TMEP §§1613.17 et seq. regarding the deadlines and surcharge for correcting deficiencies.

Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration.  Similarly, only a single deficiency surcharge is required to correct several deficiencies within one §71 affidavit or declaration.

The grace period surcharge applies only where no filing was made during the sixth year after the date of registration, or within the year before the end of any ten-year period after the date of registration.  A holder who files within these periods, but corrects a deficiency after these periods have expired, will be subject to the deficiency surcharge only.  On the other hand, someone who files during the grace period and cures deficiencies after expiration of the grace period will be subject to both the grace period surcharge (for the ability to file the affidavit or declaration during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the end of the grace period).   See H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).

1613.06(c)   Processing Affidavit or Declaration Filed with Insufficient Fees

An affidavit or declaration that does not include a fee, or does not include sufficient fees for all the classes to which the affidavit or declaration pertains (and the grace period surcharge, where applicable), is deficient.  Fee deficiencies may be cured before expiration of the deadlines set forth in §71 of the Act, 15 U.S.C. §1141k, without payment of a deficiency surcharge, or after expiration of the deadlines set forth in §71 of the Act with the deficiency surcharge required by §71(c) of the Act.  See TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

If the affidavit or declaration was filed without sufficient fee(s), but the affidavit or declaration included an authorization to charge deficient fees to a USPTO deposit account (37 C.F.R. §2.208), the required fee(s) (and grace period surcharge, where applicable) will be charged to the deposit account.  If the deposit account authorization was included with the affidavit or declaration as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.

An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.

If a check submitted as payment of a filing fee for an affidavit or declaration of use or excusable nonuse is returned unpaid, or an electronic funds transfer ("EFT") or credit card payment is refused or charged back by a financial institution, this is regarded as a deficiency.  In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused.  37 C.F.R. §2.6(b)(12).  See TMEP §405.06 for additional information.

If at least one fee is submitted for a multiple-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue an Office action requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied.  If the holder does not submit the required fee(s) or specify the class(es) to which the original fee(s) should be applied, the USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest-numbered class and will delete any unpaid class(es).  37 C.F.R. §7.37(d)(3).  See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §71 affidavit or declaration.

1613.07   Ownership and Who May File §71 Affidavit or Declaration

1613.07(a)   Affidavit or Declaration Must Be Filed by Holder

The affidavit or declaration of use or excusable nonuse must be filed by the holder of the international registration.  Filing by the holder is a minimum requirement that must be met before the expiration of the deadlines set forth in §71(a) of the Act, 15 U.S.C. §1141k(a), (i.e., during the sixth year after the date of registration in the United States, or within the year before the end of every ten-year period after the date of registration in the United States), or within the six-month grace period after expiration of these deadlines.  37 C.F.R. §§7.36(b), 7.37(a).

If it is unclear whether the party who filed the affidavit or declaration is the present holder, the Post Registration staff will issue an Office action requiring the party to establish its ownership.   See TMEP §1613.07(b) .

If the affidavit or declaration was not filed in the name of the holder of the registration, and there is time remaining in the statutory filing period (which includes the grace period), the true holder may (1) submit, in response to an Office action, a correction of the name in the filing of record or (2) file a complete new affidavit or declaration, together with the filing fee per class required by 37 C.F.R. §7.6, and, if applicable, a specimen of use for each class.  If a new affidavit or declaration is filed during the grace period, the holder must include the grace period surcharge per class with the new affidavit or declaration.  If a correction is submitted, the holder must also confirm that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true holder.  37 C.F.R. §§2.193(e)(1) and 7.37(b); TMEP §1613.08(a) .  If the original affidavit or declaration was not signed by an authorized signatory, the holder must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder, that affirms the representations in the original affidavit or declaration.  37 C.F.R. §7.37(b).

If the affidavit or declaration was not filed in the name of the holder of the registration, and there is no time remaining in the grace period, the deficiency may be corrected within a prescribed time.  15 U.S.C. §1141k(c).  The Post Registration staff will issue an Office action notifying the party who filed the affidavit or declaration of the ownership issue and of the time period within which it must be corrected.  The true holder may submit a correction to the filing of record within the prescribed time and must also include the deficiency surcharge.  37 C.F.R. §7.6(a)(8).  If a correction is submitted, the holder must also verify that the original affidavit or declaration was signed by a person properly authorized to sign on behalf of the true holder.  37 C.F.R. §§2.193(e)(1) and 7.37(b); TMEP §1613.08(a) .  If the original affidavit or declaration was not signed by an authorized signatory, the holder must also submit a statement, signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder, that affirms the representations in the original affidavit or declaration.  37 C.F.R. §7.37(b).

See also TMEP §1613.07(e) regarding mistakes in setting forth the name of the holder.

1613.07(b)     Establishing Ownership

When the affidavit or declaration is filed by someone other than the original holder of the registration, the USPTO cannot accept the affidavit or declaration unless there is clear chain of title from the original holder to the party who filed the affidavit or declaration.   TMEP §502.01 .

If USPTO records do not show a clear chain of title in the party who filed the affidavit or declaration, the Post Registration staff will issue an Office action requiring the party to establish its ownership of the registration.  Ownership can be established by recording the appropriate documents with the International Bureau of the World Intellectual Property Organization ("IB").  37 C.F.R. §7.22; TMEP §1904.06 .  Actual evidence of a chain of title cannot be submitted to the USPTO to establish ownership of an extension of protection.

Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB.  A holder cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Recordation Branch of the USPTO.  The USPTO will record only those notifications received from the IB.  The IB will notify the USPTO of any changes of the name of the holder or in ownership of the international registration recorded in the International Register, and the USPTO will automatically update its database to reflect the change(s).   TMEP §§501.07 and 1904.06 .

The holder should notify the Post Registration staff when Office records indicate that the change in the name or ownership has been received from the IB.  The USPTO cannot recognize the party who filed the §71 affidavit or declaration as the current holder until notification is received from the IB that a change in name or ownership has been recorded.  Therefore, the holder may wish to contact the IB at http://www.wipo.int/madrid/en/contact.html  regarding the recordation of the appropriate documents.  Additionally, a new holder can check TSDR to determine whether the Trademark database has been updated to reflect all changes received from the IB.

See TMEP §1613.07(a) regarding an affidavit or declaration filed by a party who was not the holder of the registration at the time of filing.

1613.07(c)   Changes of Legal Entity

The procedures for establishing ownership, as discussed in TMEP §1613.07(b) , also apply to changes of name and changes of legal entity.  See TMEP §1613.07(d) regarding changes of name.

A change in the country or other jurisdiction of incorporation is a change of legal entity, creating a new party.

The death of a partner, or other change in the membership of a partnership, normally creates a change in legal entity unless the partnership agreement provides for continuation of the partnership and the relevant law permits this.

A merger of companies into a new company normally constitutes a change of legal entity.

Affidavits or declarations may be accepted from trustees, executors, administrators, and the like, when supported by a court order or other evidence of the person’s authority to act on behalf of the present holder.  If there is a court order, a copy of the order should be submitted.

1613.07(d)   Changes of Name

A mere change of the name of a party is not a change of entity and will not require an inquiry regarding ownership, if there is clear title in the party who filed the §71 affidavit or declaration.  Therefore, if the holder records a change of name with the IB and subsequently files the §71 affidavit or declaration in its former name, the USPTO will not issue an inquiry regarding ownership.  

However, if it is unclear from USPTO records whether the party who filed the affidavit or declaration is the holder of record, the holder must record appropriate documentation of the change of name with the IB.   See 37 C.F.R. §7.22 and TMEP §1613.07(b) .  Actual evidence cannot be submitted to the USPTO to establish ownership of an extension of protection.

1613.07(e)   Correction of Mistake in Setting Forth the Name of the Holder

If the affidavit or declaration was filed by the holder of the registration, but there is a mistake in the manner in which the name of the holder is set out in the affidavit or declaration, the mistake can be corrected.   See In re Atlanta Blue Print Co. , 19 USPQ2d 1078 (Comm’r Pats. 1990).  No deficiency surcharge is required in this situation.

See TMEP §1613.07(a) regarding an affidavit or declaration mistakenly filed in the name of a person or existing legal entity who did not own the mark as of the filing date.

See TMEP §1201.02(c) for examples of correctable and non-correctable errors.

1613.08   Execution of Affidavit or Declaration

1613.08(a)   Persons Who May Sign Affidavit or Declaration

Under 37 C.F.R. §7.37(b), the §71 affidavit or declaration must include a statement that is signed and verified (sworn to) or supported by a declaration under 37 C.F.R. §2.20 by a person properly authorized to sign on behalf of the holder.  A "person who is properly authorized to sign on behalf of the holder" is:  (1) a person with legal authority to bind the holder; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the holder; or (3) an attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the holder.  37 C.F.R. §7.37(b).

Generally, the USPTO does not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.   See TMEP §611.03(a) .

1613.08(b)   Date of Execution of Affidavit or Declaration

Under 37 C.F.R. §7.37(b), the verified statement must be executed on or after the beginning of the relevant filing period specified in §71 of the Act, 15 U.S.C. §1141k, (i.e., on or after the fifth anniversary of the date of registration in the United States, on or after the beginning of the one-year period before the end of each ten-year period after the date of registration in the United States, or during the available grace period).  Because the purpose of the affidavit or declaration is to attest to the use or excusable nonuse of the mark within the time periods specified in §71 of the Act, the affidavit or declaration cannot be executed before these time periods begin.

An affidavit or declaration filed within the period specified in §71 of the Act, but executed before that period, is deficient.  The holder of the registration will be required to submit a substitute or supplemental affidavit or declaration attesting to use in commerce (or excusable nonuse) on or in connection with the goods or services within the relevant period specified in §71 of the Act.

If the prematurely executed §71 affidavit or declaration was filed during the relevant period specified in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States or within one year before the end of any ten-year period after the date of registration in the United States), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §71(c) of the Act.  If the prematurely executed §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge.  See TMEP §1613.04 regarding the deadlines for filing §71 affidavits and TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

Date of Execution Omitted .  If the §71 affidavit or declaration is signed, but the date of execution is omitted, the Post Registration staff must require that the holder of the registration set forth the date of execution for the record.  If the affidavit or declaration was executed within the relevant filing period, no deficiency fee is required.  If there are no other outstanding issues, the holder may provide the Post Registration staff with the date by telephone or e-mail and the Post Registration staff must enter an appropriate Note to the File in the record.  If the affidavit or declaration was not executed within the relevant filing period, the affidavit or declaration is deficient, and the holder must submit a substitute or supplemental affidavit or declaration, as discussed above.

1613.08(c)   Signature of Electronically Transmitted Affidavit or Declaration

See 37 C.F.R. §2.193(c) and TMEP §611.01(c) regarding signature of an affidavit or declaration filed through TEAS.

1613.08(d)   Form and Wording of Verification

The format of the verification may be:  (1) the classical form for verifying, which includes an oath (jurat) ( see TMEP §804.01(a) ); or (2) a declaration under 37 C.F.R. §2.20 or 28 U.S.C. §1746 instead of an oath ( see TMEP §804.01(b) ).

1613.09   Goods and/or Services Set Forth in §71 Affidavit or Declaration

1613.09(a)   Goods and/or Services Must Be Specified or Expressly Incorporated by Reference

Under 15 U.S.C. §1141k(b) and 37 C.F.R. §7.37(e)(1), the affidavit or declaration must specify the goods/services recited in the registration on or in connection with which the mark is in use in commerce, and/or the goods/services for which excusable nonuse is claimed.  See TMEP §1613.10 regarding use in commerce and TMEP §1613.11 regarding excusable nonuse.  The affidavit or declaration may incorporate by reference the identification set forth in the registration certificate (e.g., "all goods/services listed in the registration" or "all goods/services listed in the registration except... [specifying the goods/services not covered by the affidavit or declaration]").  Incorporation by reference is recommended to avoid inadvertent omissions.

If the holder is alleging use with respect to some of the goods/services and excusable nonuse for other goods/services, the holder must clearly indicate which goods/services are in use and which goods/services are not in use.

1613.09(b)   Deletion of Goods and/or Services

If the holder of the registration intends to delete goods/services from the registration, this should be expressly stated in the affidavit or declaration.  37 C.F.R. §7.37(e)(2). Once a holder expressly indicates an intention to delete goods, services, or classes from a registration, they may not be reinserted.

1613.09(c)   Failure to List All Goods and/or Services Recited in Registration

An affidavit or declaration that fails to list or incorporate by reference all the goods/services recited in the registration, and does not include a statement of intent to delete the omitted goods/services, is deficient.  The Post Registration staff will issue an Office action requiring the party to either file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services or state that the omitted goods/services should be deleted.

If the holder files a substitute or supplemental affidavit or declaration adding the omitted goods/services, the holder must verify that the mark was in use in commerce on or in connection with the goods/services during the relevant filing period specified in §71 of the Act, 15 U.S.C. §1141k.  This substitute affidavit or declaration may be filed before expiration of the relevant deadline set forth in §71 of the Act for no fee, or after expiration of the deadline set forth in §71 of the Act with the deficiency surcharge required by §71(c) of the Act.  See TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

If the holder does not file a substitute or supplemental affidavit or declaration that the mark was in use in commerce on or in connection with the omitted goods/services within the period for response to the Office action ( see TMEP §1613.16 ), the omitted goods/services will be deleted from the registration.  

1613.09(d)   New Goods and/or Services Cannot Be Added

Goods and/or services that are not listed in the registration may not be set forth in the §71 affidavit or declaration.

1613.10   Use in Commerce

The §71 affidavit or declaration must state that the mark is in use in commerce on or in connection with the goods and/or services listed in the registration, unless excusable nonuse is claimed.  37 C.F.R. §7.37(f)(1).  See TMEP §1613.11 regarding excusable nonuse.  The use in commerce requirement may be satisfied if the mark has not been abandoned and the use meets the statutory definition of "use in commerce," i.e., bona fide use in the ordinary course of trade, and not made merely to reserve a right in the mark. 15 U.S.C. §1127. The §71 affidavit or declaration does not have to specify the type of commerce (e.g., interstate) in which the mark is used.  The USPTO presumes that someone who states that the mark is in use in commerce is stating that the mark is in use in a type of commerce that Congress can regulate, unless there is contradictory evidence in the record.

A §71 affidavit or declaration that does not state that the mark is in use in commerce is deficient.  The holder must submit a substitute affidavit or declaration stating that the mark was in use in commerce on or in connection with the goods and/or services listed in the registration during the relevant period specified in §71 of the Trademark Act, 15 U.S.C. §1141k, as follows:

    • (1) If the §71 affidavit or declaration was filed during the sixth year after the date of registration in the United States, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services before the expiration of the sixth year after the date of registration, if accurate; or
    • (2) If the §71 affidavit or declaration was filed within one year before the end of any ten‑year period after the date of registration in the United States, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services within one year before the end of the ten-year period after the date of registration, if accurate; or
    • (3) If the §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration must state that the mark was in use in commerce on or in connection with the goods/services before the expiration of the grace period, if accurate.

If the §71 affidavit or declaration was filed during the relevant period specified in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), the substitute affidavit or declaration may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §71(c) of the Act.  If the §71 affidavit or declaration was filed during the grace period, the substitute affidavit or declaration may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge.  See TMEP §1613.04 regarding the deadlines for filing §71 affidavits or declarations, and TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

While a substitute affidavit or declaration may be filed after the expiration of the period specified in §71 of the Act, the substitute affidavit or declaration must attest to use within the time period specified in §71 of the Act.  Therefore, if the substitute affidavit or declaration does not state that the mark was in use in commerce on or in connection with the goods/services within the relevant period specified in §71 of the Act, the USPTO will not accept the §71 affidavit or declaration, and the registration will be cancelled.

1613.11   "Excusable Nonuse" of Mark

37 C.F.R. §7.37  (Extract)

A complete affidavit or declaration under section 71 of the Act must:

. . .

  • (f) . . .
  • (2) If the registered mark is not in use in commerce on or in connection with all the goods or services in the registration, set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark[.]

The purpose of Section 71 of the Trademark Act is to remove from the register those registrations that have become deadwood.   See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969).  It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the holder of the registration.   See In re Moorman Mfg. Co., 203 USPQ 712 (Comm’r Pats. 1979).  Thus, if the mark is not in use in commerce but the holder believes the registration should not be cancelled, the holder may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark.  15 U.S.C. §1141k(b)(2).   See Ex parte Kelley-How-Thomson Co. , 118 USPQ 40 (Comm’r Pats. 1958).

Requirements for Affidavit or Declaration

Since "showing" implies proof, merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient.   See In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993); In re Moorman Mfg. Co., supra; Ex parte Astra Pharm. Prod., Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chem. Mfg. Co., 118 USPQ 106 (Comm’r Pats. 1958).  The affidavit or declaration must state when use in commerce stopped and give the approximate date when use is expected to resume.  37 C.F.R. §7.37(f)(2).  If the holder was unable to commence use due to special circumstances beyond the holder’s control that excuse the nonuse, the holder should state that the mark was never in use and give the approximate date when use is expected to begin. The affidavit or declaration must also specify the reason for nonuse, the specific steps being taken to put the mark in use, and any other relevant facts to support a finding of excusable nonuse.

Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the holder's control or "forced by outside causes."   See In re Conusa Corp., supra ; In re Moorman Mfg. Co., supra; Ex parte Kelley-How-Thomson Co., supra.

The goods/services for which excusable nonuse is claimed must be specified.  See TMEP §§1613.09 et seq . regarding proper specification of the goods and services.

In a multiple-class registration, there must be a recitation of facts as to nonuse for each class to which the affidavit or declaration pertains, or it must be clear that the facts recited apply to all the classes.

Presumption of Abandonment

If the mark has not been in use for three consecutive years and the holder has done nothing to try to resume use of the mark, the Office may presume that the holder has abandoned the mark.  15 U.S.C. §1127.   See Imperial Tobacco Ltd. v. Phillip Morris Inc. , 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997).  

Examples of Special Circumstances That Do and Do Not Excuse Nonuse

In addition to a showing that there is no intention to abandon the mark, the holder must show that nonuse is due to special circumstances beyond the holder's control that excuse nonuse.  The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:

  • Business Decision.   Nonuse related to a business decision is not beyond the holder’s control and does not excuse nonuse.
  • Decreased Demand.  Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse.  The purpose of the requirement for an affidavit or declaration is to eliminate registrations of marks that are in nonuse due to ordinary changes in social or economic conditions.   See In re Conusa Corp., supra; In re Parmalat S.p.A., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharm. Prod., Inc., supra; Ex parte Denver Chem. Mfg. Co., supra.
  • Trade Embargo or Other Circumstance Beyond Holder’s Control.  Nonuse may be considered excusable where the holder of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
  • Sale of a Business.  Temporary nonuse due to the sale of a business might be considered excusable.
  • Retooling.  The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time.  However, nonuse due to retooling is excusable only if the holder shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market.   See In re New Eng. Mutual Life Ins. Co., 33 USPQ2d 1532 (Comm’r Pats. 1991).
  • Orders on Hand.  If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
  • Illness, Fire, and Other Catastrophes.  Illness, fire, and other catastrophes may create situations of temporary nonuse, with the holder being able to outline arrangements and plans for resumption of use.  Such nonuse is often excusable.  However, a mere statement that the holder is ill and cannot conduct his or her business will not in itself excuse nonuse; the holder must show that the business is an operation that could not continue without his or her presence.   See New Eng. Mutual Life Ins., supra.
  • Negotiations with Distributors.  A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the nonuse.   See In re Parmalat, supra; In re Moorman, supra .
  • Use in Foreign Country.  Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress.   See In re Conusa, supra .
  • Use of Mark on Different Goods/Services.  Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark.   See Ex parte Kelley-How-Thomson Co., supra .
  • Use of Mark in Another Form.  Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue.   See In re Cont'l Distilling Corp ., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958).

Supplementary Evidence or Explanation of Nonuse

If the USPTO determines that the facts set forth do not establish excusable nonuse, the holder may file supplementary evidence or explanation, within the response period set forth in the Office action.  If the affidavit or declaration included a claim of excusable nonuse when filed, no deficiency surcharge will be required for supplementing this claim with additional evidence or an explanation.

New Affidavit or Declaration Claiming Use

If there is time remaining in the statutory filing period (including the grace period) and the owner responds to the Office action by submitting a new affidavit or declaration with a claim of use, specimen, and filing fee, the USPTO will examine the new affidavit or declaration of use.

1613.12   Specimen Showing Current Use of Mark in Commerce

1613.12(a)   Specimen for Each Class Required

A §71 affidavit or declaration must include a specimen or facsimile showing current use of the mark for each class of goods or services, unless excusable nonuse is claimed.  15 U.S.C. §1141k(b); 37 C.F.R. §7.37(g). When requested by the USPTO, additional specimens must be provided. 37 C.F.R. §7.37(g).

See TMEP §§904.03 et seq. regarding trademark specimens and TMEP §§1301.04 et seq . regarding service mark specimens.

The specimen must show use of essentially the same mark as the mark shown in the registration, and must be used on or in connection with the goods/services listed in the registration.  A specimen that shows use of a materially different mark ( see TMEP §1613.13 ), or shows use of the mark on other goods or services, is unacceptable.  An affidavit or declaration that does not include an acceptable specimen for each class of goods/services is deficient.   See 37 C.F.R. §7.37(g).

If a single specimen supports multiple classes, the holder may so indicate, and the Post Registration staff need not require multiple copies of the specimen.  The Post Registration staff should enter a Note to the File in the record indicating which classes the specimen supports.

The specimen should be flat and no larger than 8½ inches (21.6 cm) wide by 11.69 inches (29.7 cm.) long.  If a specimen exceeds these size requirements, the USPTO will create a facsimile of the specimen that meets these requirements (i.e., is flat and no larger than 8½ inches wide by 11.69 inches long), put it in the record, and destroy the original bulky specimen.  If the copy of the specimen created by the USPTO does not adequately depict the mark, the Post Registration staff will require a substitute specimen that meets these size requirements, and an affidavit or declaration verifying the use of the substitute specimen.

If the specimen is otherwise deficient, the Post Registration staff will require a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §71 of the Act.   See 37 C.F.R. §7.39; see also TMEP §1613.12(c) (regarding substitute specimens).

The USPTO will not return specimens filed with a §71 affidavit or declaration.

1613.12(b)   Specimens in Electronically Filed Affidavits or Declarations

If the holder files the §71 affidavit or declaration through TEAS, the holder should submit a digitized image in .jpg or .pdf format.

Sometimes, no visible specimen is in the record due to a technical problem during submission of the affidavit or declaration.  In this situation, the Post Registration staff should first send an e-mail to the TEAS mailbox to ask whether the problem can be fixed by uploading the file again.  If it cannot, the Post Registration staff must ask the holder to submit:  (1) the specimen (or a facsimile of the specimen) that was attached to the original electronically filed affidavit or declaration; and (2) a statement by the person who transmitted the affidavit or declaration to the USPTO that the specimen being submitted is a true copy of the specimen submitted with the electronically filed affidavit or declaration.  This statement does not have to be verified.  Alternatively, the holder may submit a new specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods/services during the relevant period specified in §71 of the Act.  No deficiency surcharge is required.  See TMEP §1613.12(c) regarding the requirements for an affidavit or declaration supporting use of substitute specimens.

The Office prefers that the specimen, whether a true copy of the original or a substitute, be submitted electronically via the Trademark Electronic Application System ("TEAS").  In TEAS, the Response to Office Action form can be accessed by clicking on the link entitled "Response Forms" at http://www.uspto.gov.

1613.12(c)   Substitute Specimens

If a specimen for any class is omitted or is deficient, the holder must file a substitute specimen, together with an affidavit or declaration that the substitute specimen was in use in commerce on or in connection with the goods or services during the relevant period specified in §71 of the Act, 15 U.S.C. §1141k, as follows:

    • (1) If the §71 affidavit or declaration was filed during the sixth year after the date of registration in the United States, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the sixth year after the date of registration, if accurate; or
    • (2) If the §71 affidavit or declaration was filed within one year before the end of any ten-year period after the date of registration in the United States, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce within one year before the end of the ten-year period after the date of registration, if accurate; or
    • (3) If the §71 affidavit or declaration was filed during the grace period, the affidavit or declaration supporting use of the substitute specimen must state that the substitute specimen was in use in commerce before the expiration of the grace period, if accurate.

If the §71 affidavit or declaration was filed during the relevant period specified in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), the substitute specimen may be filed before expiration of the relevant period for no fee, or after expiration of the relevant period with the deficiency surcharge required under §71(c) of the Act.  If the §71 affidavit or declaration was filed during the grace period, the substitute specimen may be filed before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge.  See TMEP §1613.04 regarding the deadlines for filing §71 affidavits or declarations and TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies.

While a substitute specimen and supporting affidavit or declaration may be filed after the expiration of the period specified in §71 of the Act, the supporting affidavit or declaration must attest to use of the specimen within the time period specified in §71 of the Act.  Therefore, if the affidavit or declaration supporting the substitute specimen does not state that the specimen was in use in commerce prior to the end of the relevant period specified in §71 of the Act, the USPTO will not accept the affidavit or declaration, and the registration will be cancelled as to any class for which no proper specimen was submitted.

See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding the proper person to sign an affidavit or declaration.

1613.13   Differences in the Mark as Used on the Specimen and the Mark as Registered

The mark to which the §71 affidavit or declaration pertains must be essentially the same as the mark that appears in the registration.  Where the specimen reflects a change in the mark since the registration issued, acceptance of the affidavit or declaration will depend on the degree of change.  A material alteration of the mark will result in refusal of the affidavit or declaration on the ground that the registered mark is no longer in use.   See In re Int’l Nickel Co., Inc. , 282 F.2d 952, 127 USPQ 331 (C.C.P.A. 1960); In re Continental Distilling Corp. , 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958); Ex parte Richards, 153 USPQ 853 (Comm’r Pats. 1967).   See also Torres v. Cantine Torresella S.r.l. , 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986); In re Holland American Wafer Co ., 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).

Mere changes in background or styling, or modernization, are not ordinarily considered to be material changes in the mark.   See Ex parte Petersen & Pegau Baking Co., 100 USPQ 20 (Comm’r Pats. 1953) (change in matter determined to be mere background and type face held not a material alteration of "PETER PAN" mark).  Whether the change in a mark as used on the specimen is a material change is a question of fact that the Post Registration staff must determine on a case-by-case basis.

Generally, the standard used to determine whether a change is material under §71 is the same as the standard used to determine whether the mark in a registration based on an application under §1 or §44 of the Trademark Act may be amended under 15 U.S.C. §1057(e).  If the mark could be amended under §7(e) because the character of the mark had not been materially altered, then the specimen filed with the §71 affidavit or declaration should be accepted.  In determining whether a change constitutes a material alteration, the USPTO will always compare the mark in the specimen to the mark as originally registered.  See TMEP §§ 807.14 et seq . and 1609.02(a) for additional information about material alteration.

However, where the registered mark is currently used as one of several elements in a composite mark, the decision as to whether to accept the specimen requires consideration of whether the registered mark makes an impression apart from the other elements of the composite mark.  If the display of the composite is such that the essence of the registered mark makes a separate impression, then the specimen may be sufficient for purposes of the §71 requirement.  In many cases, word elements are severable from design elements, because words tend to dominate in forming a commercial impression.   See In re DeWitt Int’l Corp. , 21 USPQ2d 1620 (Comm’r Pats. 1991).  If the mark, as used on the §71 specimen, creates a separate impression apart from any other material on the specimen, then the specimen may be accepted as evidence of current use of the registered mark.

If the USPTO determines that the mark on the specimen is a material alteration of the registered mark, the holder may file a substitute specimen.  If the holder files a substitute specimen after expiration of the relevant filing period specified in §71 of the Act, the holder must pay the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c), and 37 C.F.R. §7.6.  See TMEP §1613.12(c) regarding substitute specimens, and 37 C.F.R. §7.39 and TMEP §§1613.17 et seq. regarding the procedures for correcting deficiencies in a §71 affidavit.

1613.13(a)   Amendment of Mark in Registration

If the USPTO accepts the §71 affidavit or declaration, and there is a difference between the mark on the specimen filed with the affidavit or declaration and the mark in the registration, the mark as originally registered remains the mark of record.  The holder cannot file a request for amendment under §7(e) of the Act as the mark in a registered extension of protection cannot be amended. In some situations, however, the owner may file a request under §7(e) to add a standard character claim.   See TMEP §1609.02 .

1613.14   Designation of Domestic Representative by Foreign Holder

Under 15 U.S.C. §1141k(f), if the holder of the international registration of the mark is not domiciled in the United States, the affidavit or declaration may include the name and address of a United States resident upon whom notices or process in proceedings affecting the registration may be served.  The USPTO encourages parties who do not reside in the United States to designate domestic representatives.  To expedite processing, the USPTO recommends that designations of domestic representative be filed through TEAS, at http://www.uspto.gov.   See TMEP §610.

The designation should be signed by the individual holder, someone with legal authority to bind a juristic holder (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner").  In the case of joint holders who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(8); TMEP §611.03(h) .

1613.15   Office Actions and Notices Regarding Affidavit or Declaration

Upon receipt of a §71 affidavit or declaration, the USPTO updates the prosecution history of the registration in the Trademark database to indicate that the affidavit or declaration has been filed.

When a §71 affidavit or declaration is filed electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the affidavit or declaration, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

If a §71 affidavit or declaration is filed on paper, no acknowledgment of receipt of the affidavit or declaration is sent before it is examined, unless the holder includes a stamped, self-addressed postcard with the affidavit or declaration ( see TMEP §303.02(c) et seq .).

If, upon examination, the USPTO determines that the affidavit or declaration is acceptable, the USPTO sends a notice of acceptance.  If the affidavit or declaration is not acceptable, the USPTO issues an action stating the reasons for refusal.  37 C.F.R. §7.39.

Sometimes, it may be necessary for the USPTO to request additional information in order to properly examine the affidavit or declaration. In such cases, the USPTO will require the holder to furnish such additional information, specimens, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the §71 affidavit or declaration. 37 C.F.R. §7.37(h)-(h)(1).

The propriety of the original registration is not re-examined in connection with the affidavit or declaration under §71.

1613.16   Response to Office Action

Deadline .  Under 37 C.F.R. §7.39(a), the holder must file a response to a refusal within six months of the issuance date of the Office action, or before the end of the relevant filing period set forth in §71(a) of the Act, whichever is later.  If no response is received within that time, the registration will be cancelled, unless time remains in the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3).  If time remains in the grace period, the holder may file a complete new affidavit or declaration, with a new fee.

The holder may file a petition to the Director under 37 C.F.R. §§2.146(a)(5) and 2.148 to waive 37 C.F.R. §7.39(a) so that a late response to an Office action can be accepted.  However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured.   See TMEP §1708 .  The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §7.39(a).  See TMEP §1712.02(b). The "unintentional delay" standard of 37 C.F.R. §2.66 does not apply to the failure to respond to an Office action issued in connection with a §71 affidavit or declaration.   TMEP §1714.01(f)(ii)(D) .

Signature .  The response must be signed by a qualified practitioner, or by the holder of the registration or someone with legal authority to bind the holder.  If the holder is represented by a qualified practitioner, the practitioner must sign.  37 C.F.R. §§2.193(e)(2)(i), 7.39(a), and 11.18(a).  If the holder is not represented by a qualified practitioner, the individual holder or someone with legal authority to bind a juristic holder must sign.  37 C.F.R. §§7.39(a) and 11.14(e); TMEP §611.03(b) .  In the case of joint holders who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(2)(ii).  See TMEP §§611.06 et seq . for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq . regarding persons who are qualified to represent others before the USPTO in trademark cases.

When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must treat the response as incomplete and follow the procedures in TMEP §§611.05 et seq .

Correction of Deficiencies .  See TMEP §§1613.17 et seq . for information about the procedures, deadlines, and surcharge for correcting deficiencies.

1613.17   Correction of Deficiencies in §71 Affidavit or Declaration

37 C.F.R. §7.39(c) 

If the affidavit or declaration is filed within the time periods set forth in section 71 of the Act, deficiencies may be corrected after notification from the Office, as follows:

  • (1) Correcting deficiencies in affidavits or declarations timely filed within the periods set forth in sections 71(a)(1) and 71(a)(2) of the Act.  If the affidavit or declaration is timely filed within the relevant filing period set forth in section 71(a)(1) or section 71(a)(2) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge.  Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 71(c) of the Act and § 7.6.
  • (2) Correcting deficiencies in affidavits or declarations filed during the grace period.  If the affidavit or declaration is filed during the six-month grace period provided by section 71(a)(3) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 71(c) of the Act and § 7.6.
  • (d) If the affidavit or declaration is not filed within the time periods set forth in section 71 of the Act, the registration will be cancelled.

1613.17(a)   Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §71(a) of the Act

If the affidavit or declaration is filed during the periods set forth in §71(a) of the Act (i.e., during the sixth year after the date of registration in the United States, or within one year before the end of any ten-year period after the date of registration in the United States), deficiencies may be corrected, after notification from the Office, within the relevant period without paying a deficiency surcharge, or after the expiration of the relevant period with payment of the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c).

Any deficiency must be cured before the end of the relevant filing period set forth in §71 of the Act or within the set period for response to the Office action, whichever is later.  15 U.S.C. §1141k(c).  If no response is filed, or if the holder does not correct the deficient affidavit or declaration, within this time period, the registration will be cancelled, unless time remains in the grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k(a)(3). If time remains in the grace period, the holder may file a complete new affidavit, with a new fee.   See TMEP §1613.16 .

1613.17(b)   Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period  

If the affidavit or declaration is filed during the six-month grace period under §71(a)(3) of the Act, 15 U.S.C. §1141k (a)(3), deficiencies may be corrected, after notification from the Office, before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c).

Deficiencies must be cured within six months of the issuance date of the Office action.  37 C.F.R. §7.39(a).   See TMEP §1613.16 .

1613.17(c)   Defects That Cannot Be Cured After Expiration of the Grace Period

The registration will be cancelled if an affidavit or declaration of use or excusable nonuse is not filed within the time period set forth in §71 of the Act (including the grace period).  15 U.S.C. §1141k(a).  Untimely filing cannot be cured after expiration of the grace period, even with a deficiency surcharge.   See TMEP §1613.04 regarding the deadline for filing the affidavit or declaration.

1613.18   Petition Under 37 C.F.R. §2.146

The action of the Post Registration staff on a §71 affidavit or declaration may not be appealed to the Trademark Trial and Appeal Board, but the holder may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 7.40(b). A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c).  See TMEP §§1705–1705.09 regarding petition procedure.

1613.18(a)   Response to Examiner’s Refusal Required Before Petition  

A response to the initial refusal to accept an affidavit or declaration is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal.  37 C.F.R. §7.40(a).

If the Post Registration staff continues the refusal to accept the affidavit or declaration, the holder may file a petition for review of the action under 37 C.F.R. §2.146(a)(2) within six months of the issuance date.  See TMEP §1705.04. If the holder does not file a petition within six months, the registration will be cancelled.  37 C.F.R. §7.40(b).

1613.18(b)   Decision on Petition Is Final Action of the USPTO  

The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO.  In the absence of a request for reconsideration ( see TMEP §1613.18(c) ), or an appeal to an appropriate court ( see TMEP §1613.18(d)) within two months of the issuance date of the decision on petition, the registration will be cancelled.

1613.18(c)   Request for Reconsideration of Denial of Petition  

Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition.  A second petition fee must be paid with the request for reconsideration.  See TMEP §1705.08 regarding requests for reconsideration of petition decisions.

1613.18(d)   Appeal to Federal Court

The holder of the registration may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision denying a petition.  15 U.S.C. §1071(a)(1) and (b)(1); 37 C.F.R. §2.145(a) and (c).

The deadline for filing an appeal or commencing a civil action is two months from the issuance date of the decision on petition.  15 U.S.C. §1071(a)(2) and (b)(1); 37 C.F.R. §2.145(d)(1).  Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.

Under 37 C.F.R. §7.40(c), a decision on petition is necessary before the holder can file an appeal or commence a civil action in any court.

1613.19   Section 71 Affidavit or Declaration Combined with Section 15 Affidavit or Declaration

A §71 affidavit or declaration may be combined with a §15 affidavit or declaration, if the combined affidavit or declaration meets the requirements of both §§71 and 15.

The filing fee for a combined §71 and §15 affidavit or declaration is the sum of the cost of the individual filings.  For example, if the filing fee for the §71 affidavit or declaration is $100 per class, and the filing fee for the §15 affidavit or declaration is $200 per class, then the filing fee for the combined affidavit or declaration under §§71 and 15 is $300 per class.

If the combined §71 and §15 affidavit or declaration is filed during the §71 grace period, the grace period surcharge per class for the §71 affidavit or declaration must be paid.  There is no grace period surcharge for a §15 affidavit or declaration.

If a combined §71 and §15 affidavit or declaration is filed, and the §71 affidavit or declaration is deficient, the deficiency may be corrected before expiration of the relevant deadline set forth in §71 of the Act for no fee, or after expiration of the relevant deadline with the deficiency surcharge required by §71(c) of the Act, 15 U.S.C. §1141k(c).  See TMEP §§1613.17 et seq. for information about the procedures, deadlines, and surcharge for correcting deficiencies in a §71 affidavit or declaration.  There is no deficiency surcharge for a §15 affidavit or declaration.