If you are a business or brand owner, you might have experienced the time-consuming process of trademark registering for your products and services. However, your job doesn’t end there. Trademark renewals at regular intervals are necessary to protect your trademarks for an extended period.
For trademark renewals, you can either use Section 8 or 71 Declaration. However, what is the exact difference between these two sections? This blog will answer the above question and clearly explain Section 8 and the combined Section 71 and 15 declarations.
Overview of the Madrid Protocol
As we know, every trademark we register requires renewal on time. If you have filed a trademark with the USPTO (United States Patent and Trademark Office) directly (not under the Madrid Protocol), you can renew it using the Section 8 Declaration of Use. After using your trademark for up to 9 to 10 years, you can file a Section 8 Declaration for trademark renewal. To protect your trademark’s validity, you should file this declaration after every ten years from the initial filing.
However, if you registered a trademark under the Madrid Protocol, the renewal would come under the Section 71 Declaration of Use. Madrid Protocol simplifies the process of trademark registration that happens globally. Since the global trademark processes were tedious as they involved registration in multiple countries, Madrid Protocol is designed to make the process easier. Under Madrid Protocol, you can fill out the trademark application only once in your country, which will then be forwarded to the World Intellectual Property Organization (WIPO). After that, your application will be reviewed and sent to the respective countries for approval.
Since Madrid Protocol has simplified the process of international trademark registrations, your trademark will only get approved in some countries where you have applied. The trademark offices in each country will check and grant the approval based on their legislation.
Let’s discuss combined sections 71 and 15 declarations.
Section 71 Declaration of Use
Once your trademark is registered under the Madrid Protocol, it has to be renewed after every five to six years through the Section 71 Declaration of Use. After the tenth year, a Section 71 form should also be filed between every ninth or tenth year. Generally, Section 71 Declaration of Use will cost you $225 per trademark class. In case of missing the renewal deadlines, an additional period of six months will be provided, which will cost you an additional charge of $100 per class. This period is known as the grace period, and one can only keep their trademark alive if they submit it before the end of the grace period.
Section 15 Declaration
Protecting your trademark from infringements plays an essential role in your business. Likewise, it would help if you protect your trademark from other parties challenging its validity, and the Section 15 Declaration of Incontestability helps your business from facing such issues. You can file this Declaration of Incontestability only after five years of continuous usage of your trademark, along with the documents that prove that. The Section 15 declaration will cost you around $200 per trademark class. Make sure you have no pending procedures with your trademark registration, or else you cannot file a Section 15 declaration.
The Combined Section 71 and 15 Declaration
People who have used a trademark for five years can apply for these two sections separately. Since these two declarations are filed together often, the USPTO has enabled the way of combined filing for both sections. For this combined filing, you must pay $425 per trademark class. People who fail to file within the deadlines can file during the grace period by paying an additional charge of $100 per trademark class.
Remember, you can use this combined Section 71 and 15 Declaration for filing only if you have used the trademark for five consecutive years. Otherwise, you must file section 71 separately and file Section 15 Declaration after five years of continuous usage. No matter what declaration you are filing to protect your trademark’s validity, it would help if you were careful about the deadlines. If not, it may lead to the cancellation of the trademark cancellation.
To Sum Up
Renewing your trademarks under Section 71 and 15 Declaration on time will help you protect your trademark for a very long period. In addition, the Madrid Protocol and the Combined Section 71 and 15 Declaration make it easier to register your trademarks internationally from your country. Make sure to follow the required procedures on time to protect your trademarks from infringement problems and cancel the trademark registration. This article explains trademark renewals, the Combined Section 71 and 15 declarations, and the necessity of timely filing of applications.
Disclaimer-Brealant provides access to independent attorneys and self-service tools, is not a law firm, and does not provide legal advice.
