1904.07 Invalidation of Protection in United States

A registered extension of protection to the United States may be invalidated. See Common Reg. 19. "Invalidation" means a decision by a competent administrative or judicial authority of the United States, revoking or cancelling the effects, in the territory of the United States, of an international registration with regard to all or some of the goods/services covered by a registered extension of protection to the United States. Common Reg. 1(xix bis); see Article 5(6). In other words, a registration is invalidated when it is revoked or cancelled, in whole or in part, pursuant to a decision of the USPTO or by order of a federal court of the United States.

Generally, there are four reasons invalidation of a registered extension of protection to the United States may occur: (1) cancellation proceedings instituted by a third party before the Trademark Trial and Appeal Board ("TTAB"); (2) order of a federal court of the United States; (3) failure to file an acceptable §71 affidavit or declaration; or (4) holder’s voluntary surrender of the registered extension of protection. Each of these reasons is discussed below.

Invalidation may be in whole or in part, that is, it may be as to all or some of the goods/services covered by the registered extension of protection to the United States. See Common Reg. 19(1)(v). In the case of partial invalidation, the USPTO will not cancel the registered extension of protection but, instead, delete the relevant goods/services from the USPTO’s electronic records for the registration. An updated registration certificate will not issue.

The holder has the same rights and remedies as the owner of a national registration issued on the Principal Register by the USPTO. 15 U.S.C. §1141i(b)(2), 37 C.F.R. §7.25. Accordingly, the cancellation procedures mentioned above that result in an invalidation of a registered extension of protection are governed by the substantive and procedural law of the United States, and are the same as for national marks registered by the USPTO. See Guide to International Registration, B.II.91.01–.02.

1904.07(a) Invalidation Resulting From Cancellation Due to Third-Party Challenge

Invalidation may occur due to cancellation proceedings instituted by a third party before the TTAB, under §14 of the Trademark Act, because, for instance, the mark has become generic. See 15 U.S.C. §1064. If the third party is successful and the TTAB issues an order granting the cancellation of the registered extension of protection, the USPTO will cancel the registration in due course. See TMEP §1607 and TBMP §§303, 307–309 regarding cancellation of registration.

Invalidation may also occur pursuant to an order of a federal court of the United States cancelling the registered extension of protection, under §37 of the Trademark Act. See 15 U.S.C. §1119. Such order may result from, for example, infringement proceedings involving the holder and a third party, or the disposal of the holder’s assets. The USPTO will cancel the registration pursuant to the court order. See TMEP §1610 regarding a court order concerning a registration.

Regardless of whether by order of the TTAB or a federal court of the United States, after cancellation, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation.

1904.07(b) Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration

Invalidation may occur due to the holder’s failure to timely file and meet the requirements of an affidavit or declaration under §71 of the Trademark Act, showing use of the registered mark in commerce in the United States. See 15 U.S.C. §1141k; 37 C.F.R. §7.36–.40; TMEP §§1613, 1613.04–1613.05, 1904.10. Failure to timely file the §71 affidavit or declaration is a statutory requirement, and the Director has no authority to waive the deadline for filing. See 15 U.S.C. §1141k; TMEP §1613.04. The USPTO typically waits until about one month after the expiration of the grace period before automatically cancelling the registered extension of protection, in order to avoid inadvertent cancellation of a registration due to a delay in entering a timely filed §71 affidavit or declaration into the USPTO records.

If a timely filed §71 affidavit or declaration does not meet the requirements for filing and is found unacceptable, the USPTO will issue an Office action notifying the holder of the refusal and stating the reasons the affidavit or declaration is deficient. Failure to timely respond to the Office action or failure to timely correct the deficiencies stated in the Office action will result in cancellation of the registered extension of protection to the United States. 37 C.F.R. §7.39; TMEP §1613.15–1613.17(c).

Once the registration is cancelled, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation.

In a registered extension of protection for which an acceptable §71 affidavit or declaration was not filed, if the holder seeks to expedite cancellation, the holder may request in writing that the USPTO expedite the processing of the cancellation of the registered extension of protection. The request should be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner, and should specifically state that an acceptable §71 affidavit or declaration was not filed on or before the end of the grace period. Such a request should be directed to the Post Registration Section; if it is sent to the examining attorney, the examining attorney should forward it to the Supervisor of the Post Registration Section.

See TMEP §§1613–1613.19 for detailed information about §71 affidavits or declarations.

1904.07(c) Invalidation Resulting From Voluntary Surrender of Registered Extension of Protection

Invalidation may occur when the holder of a registered extension of protection voluntarily surrenders the registration for cancellation under §7(e) of the Trademark Act. 15 U.S.C. §1057(e). If the registered extension of protection is surrendered in its entirety, the registration will be cancelled in due course. If an acceptable §71 affidavit or declaration is filed for less than all the goods/services in the registered extension of protection, this is regarded as a surrender of the registration as to the good(s)/service(s) that are omitted. The relevant good(s)/service(s) will be deleted from the USPTO’s electronic records for the registration. An updated registration certificate will not issue.

After cancellation, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation. See TMEP §1608 for information about surrender of registration for cancellation.

1904.07(d) Issuance of Notice of Invalidation to the International Bureau

Once the registered extension of protection has been cancelled by the USPTO, the Director shall issue to the IB a notice of invalidation of the registered extension of protection to the United States. See Article 5(6). The USPTO must notify the IB of the following information in the notice of invalidation: the administrative or judicial authority (i.e., the Director or federal court) that cancelled the registered extension of protection, the date on which the invalidation was pronounced and the effective date of the invalidation, and the fact that it is no longer subject to appeal; the number of the international registration and the name of the holder; and, if the invalidation does not concern all the goods/services, state those that are concerned (indicating either the goods/services that are no longer covered, or those that remain covered). Common Reg. 19(1).

If the holder seeks to expedite the issuance of the notice of invalidation to the IB, the holder may request in writing that the USPTO expedite the processing of the notice of invalidation of the registered extension of protection. The request should be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. Such a request should be directed to the Madrid Processing Unit via e-mail at MPU@uspto.gov.

Upon receipt of the notice of invalidation from the USPTO, the IB will record the invalidation in the International Register, inform the holder, and inform the USPTO of the date on which the invalidation was recorded in the International Register. Common Reg. 19(2).

After a registered extension of protection to the United States has been cancelled and inscribed in the International Register as invalidated, the holder may submit a subsequent designation seeking protection in the United States of the same mark for all or some of the goods/services in the international registration. The IB will not process a subsequent designation until the notice of invalidation has been recorded in the International Register. The holder may submit a subsequent designation prior to the recordal of the invalidation and request that it take effect immediately after the recording of the invalidation in the International Register. Common Reg. 24(3)(c)(ii). Upon notification, the USPTO will examine the subsequent designation to determine if protection may be granted.