Section 71 Affidavits: The Madrid Protocol Maintenance Deadline US Attorneys Forget

Most US trademark attorneys are fluent in Section 8 declarations. They know the filing window, the grace period, the specimen requirements, and the consequences of missing the deadline. But when a client's US trademark protection derives from an international registration under the Madrid Protocol, Section 8 does not apply. Section 71 of the Lanham Act governs maintenance for these marks, and its requirements — while similar in purpose — differ in critical ways that catch even experienced attorneys off guard.

This guide covers what Section 71 requires, how it differs from Section 8, when the deadlines fall, and why this is one of the most commonly missed maintenance obligations in US trademark practice.

What Is a Section 71 Affidavit?

Section 71 of the Lanham Act (15 U.S.C. 1141k) requires the holder of an international registration that has been extended to the United States to file a declaration of continued use or excusable nonuse. The purpose is identical to Section 8: the USPTO wants proof that the mark is still being used in US commerce, or a valid reason why it is not. Without this proof, US protection is cancelled.

The obligation arises because Madrid Protocol registrations take a different path to US protection than domestic registrations. Instead of filing directly with the USPTO, the applicant files an international registration through the World Intellectual Property Organization (WIPO) and designates the United States as a country where protection is sought. The USPTO examines the request for extension of protection and, if approved, issues a US registration reflecting the extension of protection.

This procedural distinction matters because the maintenance obligations flow from the type of registration, not from the underlying rights. A mark protected through Madrid Protocol extension is maintained under Section 71. A mark registered through a direct US filing is maintained under Section 8. The two regimes are parallel but separate, and confusing them is a common source of missed deadlines.

Who Needs to File a Section 71 Affidavit?

Section 71 applies to any trademark that is protected in the United States through an extension of protection under the Madrid Protocol. In practice, this means:

Foreign companies with US trademark protection obtained through WIPO. This is the most common scenario. A European or Asian company registers its mark internationally and designates the US. The mark goes through USPTO examination and receives a certificate of extension of protection. That mark is now subject to Section 71 maintenance.

Marks that were subsequently assigned to a new owner. The Section 71 obligation follows the mark, not the original registrant. If your client acquired a mark that was originally protected through Madrid Protocol extension, the Section 71 maintenance obligation transferred with the mark.

The key identifier is the USPTO database and the registration certificate, which will indicate whether the mark is a "Registration under Section 66(a)" — the section governing Madrid Protocol extensions. If it is, Section 71 applies. If it is a standard registration under Section 1(a) or 1(b), Section 8 applies instead.

How Section 71 Deadlines Differ From Section 8

The filing windows for Section 71 and Section 8 are structurally similar but differ in one respect that matters enormously for docketing purposes.

The initial filing window. Under Section 71(a)(1), the holder must file a declaration of continued use between the 5th and 6th anniversary of the US registration date shown on the registration certificate. This is analogous to the Section 8 filing window, which falls between the 5th and 6th anniversary of the registration date for domestic marks. So far, so similar.

The critical date question. Here is where attorneys stumble. For a domestic registration, the "registration date" is straightforward — it is the date printed on the registration certificate. For Madrid-based US registrations, Section 71 deadlines are calculated from the US registration date shown on the certificate. This is not the international registration date, and it is not the date the extension request was filed with WIPO. Using the wrong date shifts every subsequent deadline, potentially by months or even years.

Subsequent filings. After the initial Section 71(a)(1) filing, subsequent Section 71 declarations are due at the intervals required for maintaining the US registration, while renewal of the international registration is handled separately through WIPO on its own 10-year cycle. Because the Section 71 obligation and the WIPO renewal are separate filings to separate offices, they must be tracked independently and may not align on the same dates.

The grace period. Like Section 8, Section 71 provides a 6-month grace period after the filing window closes. Filing during the grace period requires payment of an additional fee. Missing the filing window and grace period results in cancellation of the US extension of protection, which generally cannot be cured through a late USPTO filing. The mark holder would need to file a new designation of the US through WIPO and go through examination again — assuming the mark is still eligible.

Specimen Requirements and Filing Mechanics

The substantive requirements of a Section 71 declaration mirror those of Section 8 in most respects. The filer must submit:

A declaration of continued use stating that the mark is in use in US commerce for the goods and services identified in the registration, or a declaration of excusable nonuse with an explanation of why use has not occurred and a statement that there is an intent to resume use.

One specimen per class showing current use of the mark in US commerce. The specimen requirements are the same as for Section 8: for goods, the specimen must show the mark on or in connection with the goods as they are sold or transported in commerce; for services, the specimen must show the mark as used in the sale or advertising of the services.

The prescribed fee. Current USPTO fees apply. If filing during the 6-month grace period, an additional surcharge per class is required.

Section 71 declarations are filed through TEAS (Trademark Electronic Application System), not through WIPO. This is a point of confusion for attorneys accustomed to handling all Madrid Protocol matters through the international system. Maintenance of US protection is handled directly with the USPTO, even though the underlying registration is international.

One additional nuance: if the international registration covers goods or services in the US that are broader than those currently in use, the Section 71 declaration must either (a) claim use for all listed goods/services, or (b) delete the goods/services for which use cannot be claimed. Failing to address unused goods/services can result in the declaration being found insufficient and protection being cancelled for the entire class.

Common Mistakes and How to Avoid Them

Mistake 1: Applying Section 8 rules to Madrid Protocol marks. This is the most frequent error. An attorney sees a US trademark, checks the anniversary date, and files a Section 8 declaration. The USPTO rejects it because the mark is protected through Madrid Protocol extension and requires a Section 71 filing instead. The forms are different. The legal basis cited in the declaration is different. Filing the wrong one does not satisfy the maintenance obligation.

Mistake 2: Using the international registration date instead of the US registration date shown on the registration certificate. The Section 71 filing window is calculated from the US registration date on the certificate, not the date of the international registration. These dates often differ by a year or more, depending on how long USPTO examination took. An attorney who calculates the 5-year window from the wrong date can miscalculate the filing window and risk a late filing.

Mistake 3: Assuming WIPO handles US maintenance. WIPO manages the international registration, including renewals of the international registration itself. But maintenance of the US extension of protection — the Section 71 declaration — is filed directly with the USPTO. Attorneys who handle all Madrid Protocol matters through WIPO may not realize that US maintenance requires a separate, direct filing.

Mistake 4: Missing the interaction between Section 71 filings and WIPO renewals. After the initial Section 71(a)(1) filing, subsequent declarations coincide with WIPO renewals of the international registration. But renewing the international registration through WIPO does not satisfy the separate USPTO Section 71 obligation. Both must be filed independently.

Mistake 5: Not docketing Madrid Protocol marks separately. Because Section 71 deadlines are calculated differently and have different filing requirements, they should be tracked as a distinct deadline type in your docketing system. Lumping them together with Section 8 deadlines invites exactly the kind of confusion described above.

The Penalty for Missing a Section 71 Deadline

The consequence of failing to file a Section 71 declaration within the filing window and grace period is the same as for Section 8: cancellation of US protection. The USPTO will cancel the extension of protection, and the mark will lose its US registration.

For Madrid Protocol marks, the consequences can be even more severe than for domestic registrations. When US protection is cancelled, the international registration continues to exist — the mark may still be protected in other designated countries. But the US extension is gone, and regaining it requires a new designation of the US through WIPO, a new examination by the USPTO, and a new opposition period. During the gap in protection, the mark holder has no registration-based rights in the US, only whatever common law rights may exist through continued use.

For clients with significant US commercial activity, this gap in registered protection is a serious business risk. It affects the ability to record the mark with US Customs, to use the ® symbol in US commerce, and to claim nationwide constructive notice of ownership. The malpractice exposure for an attorney who misses a Section 71 deadline is substantial.

If you manage any Madrid Protocol marks with US designations, verify now that your docketing system distinguishes between Section 8 and Section 71 obligations. For a comprehensive overview of all trademark maintenance deadlines, see our USPTO Trademark Deadline Cheat Sheet. For help tracking these deadlines automatically, see how DeadlineDocket monitors your portfolio.