Keeping a Foreign-Owned U.S. Registration Alive: Section 8, 71 and 15 Declarations

October 7, 2026

A U.S. registration doesn't stay alive on its own. Owners must periodically file sworn declarations showing the mark is still in use in U.S. commerce. Foreign owners, especially those who registered through Section 44 or Madrid without prior U.S. use, are the most likely to be caught out. Here is how the main filings work.

Section 8: Declaration of Continued Use (Direct U.S. and Section 44 Registrations)

Under 37 CFR § 2.160(a), the owner must file a declaration of continued use or excusable nonuse, or the registration will be cancelled:

• between the fifth and sixth anniversaries of the registration date; and
• within the year before the end of every ten-year period after the registration date.

A six-month grace period is available after each deadline, with a surcharge (§ 2.160(a)(3)). Under § 2.161(a), a complete declaration includes a verified statement that the mark is in use in commerce (or facts showing excusable nonuse), the goods and services in use, and one specimen per class. Goods or services no longer in use must be deleted.

Section 71: The Madrid Equivalent

Registrations that came from a Madrid Protocol (66(a)) filing aren't maintained under Section 8. Under 37 CFR § 7.36(b), the holder must file a Section 71 declaration of use or excusable nonuse on the same schedule: between the fifth and sixth anniversaries of the U.S. registration date, and within the year before the end of every ten-year period, with a six-month grace period (§ 7.36(b)(3)). Its requirements are in § 7.37.

The U.S. extension otherwise stays in force for the term of the international registration (§ 7.36(a)). It is renewed through the international registration rather than through a U.S. renewal filing, since 37 CFR § 7.25 excludes the Part 2 renewal sections from extensions of protection. If the international registration lapses or is cancelled, the U.S. extension is cancelled too (§ 7.30). See our Madrid article.

Section 15: Incontestability

Section 15 is optional but valuable. Under 37 CFR § 2.167, an owner of a Principal Register registration may file a declaration once the mark has been in continuous use in commerce for five consecutive years after registration and is still in use. The declaration must be filed within one year after the end of a five-year period of continuous use. It must state that there has been no final decision adverse to the owner's claim of ownership or right to register, and that no proceeding involving those rights is pending. Owners often file it together with the first Section 8 or 71 declaration when both are available.

Traps for Foreign Owners

• No U.S. use yet. Section 44 and Madrid registrations can issue without U.S. use, but the first declaration requires it, or a genuine excusable nonuse explanation.
• Overbroad goods and services. The declaration must cover only goods and services actually in use. Under § 2.161(b), the USPTO may demand additional specimens and evidence to test the accuracy of the register, and deleting goods after filing the declaration can carry a fee (§ 2.161(c)).
• Specimen quality. The same specimen standards apply as at filing. See why foreign specimens get refused.
• U.S. counsel. Registrants whose domicile is outside the U.S. must be represented by a U.S. attorney for these filings (37 CFR § 2.11).
• Docketing across offices. A Madrid owner may track WIPO renewal dates but miss the U.S.-specific Section 71 window.

Plan Ahead

Treat the fifth anniversary as a milestone to prepare for well in advance. Gather evidence of current U.S. sales for each class and trim the goods and services list to what is real. For portfolios managed by a foreign firm, see our page for foreign law firms and associate counsel.

This article is general information, not legal advice, and reading it does not create an attorney-client relationship. Every situation depends on its own facts, and no particular outcome can be guaranteed. Laws and government fees change; confirm current requirements before acting.