Declarations of Use play an essential role in the protection of a registered trademark.
In Argentina, these declarations must be filed between the fifth and sixth year from the grant of the trademark. Failure to file, can lead to the presumption that the trademark was not used, being liable for cancellation.
In the United States, Declarations of Use must be filed between the fifth and sixth year after the grant and every 10 years along with the renewal process. Additionally, in certain cases, they must also be filed prior to the registration of the trademark. These declarations are equally essential to maintain the protection of the trademark registration.
Differences Between Argentina and the United States:
- No Evidence of Use Required: Contrary to the USPTO (United States Patent and Trademark Office) the Argentinean Trademark Office only requires a sworn statement, and it is not mandatory to submit material evidence showing the effective use of the trademark. This affidavit can be signed by the company’s foreign representative or local counsel.
- Supporting Evidence: in Argentina, simply having products with the mark’s label or marketing materials such as flyers, websites or social media, is usually insufficient to demonstrate trademark use. While retaining this evidence is advisable, the most compelling supporting documents include invoices and contracts that reflect the trademark’s use. In contrast, in the United States, depending on whether the trademark pertains to a product or service, acceptable evidence may include catalogs, photographs, printed manuals, invoices and advertisements, among others.
- No Automatic Cancellation: In Argentina, the failure to submit the Declaration of Use within the legal deadline, does not imply the automatic cancellation of the trademark. As long as a third party or the Trademark Office has not requested the cancellation, the Declaration can be submitted later, paying an additional fee. On the other hand, in the United States the cancellation is automatic if the Declaration is not filed.
- Use for Related Products Accepted: if the mark has been used to commercialize related but not identical products or services, the cancellation of the trademark in Argentina will not proceed, while in the United States the Declaration must be filed for the same goods or services for which the trademark was registered.
Declarations of Use in Argentina and the United States present significant differences in terms of their submission requirements and legal consequences. For this reason, it is important to understand and comply with the specific requirements of each jurisdiction in order to have a comprehensive trademark protection.
At Lerman & Szlak we are at your disposal to assist you in filing your trademark declaration of use. Please reach out to us at info@lermanszlak.com or +54 9 11 3155-5114 for more information.
