1604.17    Correction of Deficiencies in §8 Affidavit or Declaration

37 C.F.R. §2.164  Correcting deficiencies in affidavit or declaration.

  • (a) If the affidavit or declaration is filed within the time periods set forth in section 8 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 8(a)(1) and 8(a)(2) of the Act.  If the affidavit or declaration is timely filed within the relevant filing period set forth in section 8(a)(1) or section 8(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 8(c) of the Act and § 2.6.
  • (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 8(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 8(c) of the Act and § 2.6.
  • (b) If the affidavit or declaration is not filed within the time periods set forth in section 8 of the Act, the registration will be cancelled.

1604.17(a)    Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §8(a) of the Act

If the affidavit or declaration is filed during the periods set forth in §8(a) of the Act (i.e., during the sixth year after the date of registration or publication under §12(c) of the Act, or within one year before the end of any ten-year period after the date of registration), 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 §8(c) of the Act, 15 U.S.C.  §1058(c).

Any deficiency must be cured before the end of the relevant filing period set forth in §8 of the Act or within the set period for response to the Office action, whichever is later.  15 U.S.C. §1058(c).   If no response is filed, or if the owner 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 §8(a)(3) of the Act, 15 U.S.C. §1058(a)(3).  If time remains in the grace period, the owner may file a complete new affidavit or declaration, with a new fee.   See TMEP §1604.16.

1604.17(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 §8(a)(3) of the Act, 15 U.S.C. §1058   (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 §8(c) of the Act, 15 U.S.C.  §1058(c).

Deficiencies must be cured within six months of the issuance date of the Office action.  37 C.F.R. §2.163(b); see TMEP §1604.16.

1604.17(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 §8 of the Act (including the grace period).  15 U.S.C. §1058(a).   Untimely filing cannot be cured after expiration of the grace period, even with a deficiency surcharge.   See TMEP §1604.04 regarding the deadline for filing the affidavit or declaration.