You may have wondered, how do I renew a US trademark registration (sometimes referred to as a wipo trademark registration) that was originally filed under the Madrid Protocol? Is it as simple as renewing a regular US trademark registration? … No.
In the US, as in most countries, you must renew a trademark registration every ten years. But if you obtain a US trademark registration through the Madrid Protocol, there are some special rules you need to be aware of. Otherwise, you risk losing your US trademark protection, or even your International Registration.
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Note that a US trademark registration issued through the Madrid Protocol is actually called an “extension of protection” instead of a registration. But we’ll just call it a registration here for simplicity. You’ll also see that US trademarks issued under the Madrid Protocol may be referred to as 66(a) applications or registrations, in reference to the section of the US Trademark Act (the Lanham Act) that deals with Madrid Protocol.
The core issue with renewing Madrid-based US trademark registrations is this: You must meet US renewal requirements and WIPO renewal requirements independently, and they are likely to use different timelines. If you complete one set of requirements, but not the other, your trademark will be cancelled.
The requirements are simple to renew the International Registration (IR) on which your Madrid-based US trademark registration is based: Every 10 years, measured from the filing date of your IR, you must submit renewal papers and appropriate fees to the World Intellectual Property Organization (WIPO). The fee you owe depends on which countries you have extended protection to. More countries, more fees.
As to the requirements specific to the US for a Madrid-based trademark, it isn’t truly a renewal of the registration—that’s still done through WIPO. But US trademark law requires that every 10 years, you must file an affidavit stating that you are continuing to use your trademark in commerce in the US. It is that affidavit that you must file to maintain your US registration. (See the fees for filing the affidavit here.)
You can file the affidavit of use to maintain your Madrid-based US trademark registration beginning on the day nine years and six months after the date that your US registration was issued. If you do not file before the day ten years and three months after the date of your US registration, then your registration will expire. If you wait until the final three months of this period, you must pay an additional fee. (See 15 U.S.C. § 1141k.)
Notice that this gives you a nine-month window to file the affidavit. This is half of the 18-month window permitted for regular (non-Madrid-based) US trademark registrations.
Also, notice that this requirement to file an affidavit of use every 10 years is in addition to the US requirement to file an affidavit of use six years after registration.
So let’s look at an example. Suppose you have an International Registration with a filed date of June 15, 2003. You request an extension of protection to the US (which is essentially like applying for a US trademark under the Madrid Protocol), and your US trademark registration is issued on August 15, 2005.
You must now meet the following deadlines:
- File a renewal of the International Registration with WIPO by June 15, 2013, and again in 2023, 2033, etc.
- File a six-year affidavit of use in the US (with the USPTO) by August 15, 2011.
- File a ten-year affidavit of use in the US (with the USPTO) by August 15, 2015 (or Nov 15, 2015 with an extra fee), and again in 2025, 2035, etc.
If you miss the WIPO deadline, the International Registration will be cancelled (which will also cancel your US trademark if it hasn’t been more than five years); if you miss any of the US deadlines, your US mark will be cancelled.