What is a Combined Section 71 & 15 declaration?

A trademark serves as an important tool in the defense of the identity of a brand so that its name, logo, or jingle is not taken by another competitor.

But as the trademark owner, you have more obligations to perform, for example, filing with the United States Patent and Trademark Office (USPTO) every few years to renew the registration.

Section 71 and Section 15 Declaration are important filings that need to be made. This filing is important for trademark owners, especially those who have obtained international registrations in order to sustain their rights on the mark and to obtain more legal protection on the marks.

In this blog, we will be learning about what this combined declaration is, why it is needed, and how it assists in protecting trademark rights.

What are Section 71 Declarations?

The Section 71 Declaration is a procedure that must be completed by owners of trademarks that have been registered under the Madrid Protocol, an international system for trademark registration.

This letter to a customer can be used as an acknowledgment that the trademark is being used in commerce within the United States.

It is required to file a Section 71 Declaration in order to keep a trademark registration under the Madrid Protocol.

Otherwise, the USPTO may cancel the U.S. protection of the mark. This declaration is required to be filed between the 5th to the 6th year from the registration date, and there is an extension of 6 months allowed (on payment of additional fees).

The declaration must include

Evidence of use in commerce

This often requires the submission of samples like labels of the product, an advertisement, or any other material where the trademark is used.

Fee payment

When filing the declaration, appropriate charges must be tendered.

Forfeiting of trademark protection in the United States ensues when one has not filed the Section 71 Declaration on time or when he or she presents inadequate proof.

It is therefore important for trademark owners to understand and file this declaration on time.

Understanding Section 15 Declarations

Section 15 Declaration is nice to have filed for trademark owners, though it is not mandatory. This is an affidavit that a registered trademark has been in use in commerce for at least five consecutive years from the date of registration.

Filing this declaration amounts to the “incontestability” of the trademark which enhances its legal protection tremendously.

Incontestability Definition

Incontestability of a trademark means that it would not be able to be attacked under certain legal provisions. For instance, it cannot be an argument that it is descriptive or it does not have enough differentiation.

This gives the trademark stronger protection and you get to recover your losses in case of a legal battle.

Eligibility for Filing

To file a Section 15 Declaration, the following conditions must be met:

• The mark must have been used for five consecutive years in commerce.
• There should be no lawsuits or negative judgments concerning the rights of the trademark.
• The mark cannot be registered on the Supplemental Register but has to be registered on the Principal Register.

Filing a Section 15 Declaration is not necessary to maintain a trademark registration but it provides an extra layer of protection which is very useful to ensure that the brand remains unaffected by outside interference.

What Is a Section 71 & 15 Declaration Combined?

A so-called Combined Section 71 and Section 15 Declaration is a declaration that owners of trademarks can file to meet two significant matters at once.

It simplifies the process of maintaining and strengthening trademark rights by combining:

Section 71

A chance to prove that the trademark is used in commerce in the United States of America is a key requirement for the Madrid Protocol international registration.

Section 15

Registering the trademark on the basis of incontestability which affords higher degrees of legal immunity.

This combined filing is particularly important to international trademark owners who seek to avoid trouble with U.S. trademark laws when seeking the defense of incontestability.

When is the Combined Declaration filed?

The combined filing usually takes place between the fifth and sixth years from the registration of the trademark. This timeline also corresponds to the filing windows of both declarations and therefore is convenient for trademark owners.

Elements of the Combined Declaration:

Efficiency

• More efficient as it solves both requirements in one filing.
• Cost-effectiveness
• Saves time and expense as opposed to filing individual declarations.

Comprehensive protection

Safeguards the trademark’s registration while at the same time ensuring that incontestability is achieved, which offers better legal protection.

By using Combined Section 71 and 15 Declaration, trademark owners can do so with greater ease and guarantee that their trademark continues to be well protected in the United States market.

Common Mistakes to Avoid While Filing the Application

It is important to file a Combined Section 71 and Section 15 Declaration to protect and uphold your trademark right across the country. However, one could easily ruin the process or lose certain legal safeguards due to a single mistake.

Here are some common errors to avoid:

Filing Too Early or Too Late

It should be noted that timing is very important when filing the combined declaration. Filing before the 5th anniversary of your registration, or after the 6th year without using the grace period, will lead to rejection or other penalties.

Lack of Proof of Commerce Use

The USPTO asks for proof that you are using your trademark in commerce and using it in the manner that you are seeking trademark protection.

Such specimens as old or incomplete materials or materials that are not related to your declaration will also lead to the rejection of your declaration.

Inaccurate Information

Any mistakes in the information entered on the form, including wrong registration numbers, wrong description of goods or services, or errors in ownership information can greatly slow down the process, or even make the filing invalid.

Exclusion of Mandatory Charges

When registering your trademark, you are charged based on each class of the goods or services you are registering.

Failure to pay for any of the classes you took might mean that your registration will not be complete, and therefore might not be valid.

Failure to Take Notice of Incontestability Requirements

In Section 15, there are certain prerequisites that, if not fulfilled, will keep your trademark from gaining incontestability: for example, not having been in use in commerce for five consecutive years.

Ignoring Legal Advice

This raises the probability of mistakes when one tries to maneuver through the filing process independently. A trademark attorney can guide you on what to avoid and how to meet the USPTO standards.

You can avoid these pitfalls and achieve successful filing of your Combined Section 71 and 15 Declaration, safeguard your trademark, and leverage all legal benefits to the maximum.

Why Hire a Trademark Lawyer?

Subsection 71(1) and Section 15 of the Income Tax Act can be a little confusing and when it comes to filing the Combined Section 71 and Section 15 Declaration, it may not be easy to do it right, especially when time is also of the essence.

Our trademark attorneys at Drishti Law are always available to help you file your application in the right way and protect your rights.

E-filing

Our attorneys are well acquainted with the rules and regulations of the USPTO.

We shall help you to establish you qualify for the declaration, collect the supporting evidence, and fill the forms correctly to prevent any rejection.

Minimize Risks of Errors

The Combined Section 71 and Section 15 Declaration are very formalistic in terms of time adherence and documentation.

At Drishti Law, we assist you in avoiding mistakes like filing early or too late, providing inadequate proof, or failing to meet critical deadlines that may pose a threat to your trademark.

Legal Protection of Trademarks

Our team can guarantee not only the maintenance of your trademark and its status but also the acquisition of the additional advantages of incontestability.

Let us assist you in utilizing this status to strengthen your brand’s legal protection and minimize the chance of future litigation.

Ongoing Trademark Strategy

The Section 71 and Section 15 Declaration is only the first step in an ongoing process of safeguarding your trademark. Drishti Law provides a full range of trademark solutions to protect and strengthen your brand’s IP rights.

If you have questions about handling the Section 71 and 15 Declarations, reach out to Drishti Law at 773-234-1139 for a free consultation. Our experienced attorneys are here to guide you through the process, helping to ensure that your brand receives the protection it deserves under state and federal laws.