Why Deadlines Are Important

Puerto Rico trademark applications and registrations are subject to strict deadlines. Generally, failure to comply with these deadlines means that the application or registration will be abandoned.

Unfortunately, many businesses who handle their trademarks internally are unaware of these deadlines or simply forget about them. This may cause them to lose their trademark rights. It can even happen when trademark matters are handled by attorneys who do not specialize in this practice, because they lack the technology to keep track of deadlines. One benefit of using the services of a trademark practice such as Vela Córdova Law is that we can help to reduce the risk of losing your trademark rights by failing to meet deadlines.

Following is a summary of the main trademark deadlines in Puerto Rico.

Responding to Office Actions

If the Trademark Office issues an office action regarding an application or other filing, the response deadline is ninety (90) days as of the notification date.

An extension of sixty (60) days is available if requested within the original 90-day term.

If the response term or its extension expires, there is an additional thirty (30) day term for reviving the application and responding to the office action.

The rules above apply only to office actions. If the Trademark Office issues a final decision, typically called a “resolution”, then there are just twenty (20) days for seeking reconsideration and thirty (30) days for seeking judicial review.

Publishing a Trademark Application

Once the PRTO approves an application and issues the notice of publication, the applicant has ninety (90) days as of the notice to publish the application in the PRTO’s Official Gazette.

It is important to note that (unlike the USPTO’s system) publication is not automatic. The applicant must enter a publication transaction in the PRTO’s electronic filing system and pay the publication fee.

If the term for publication expires, there is an additional thirty (30) day term for reviving the application and publishing it.

Declaration of First Use

For applications or registrations filed on the basis of intended use, a declaration of first use and specimen of use are due within the first three (3) years as of the filing date. For example, if the application was filed on March 1, 2019, then the declaration and specimen are due on or before March 1, 2022.

One may request an extension of up to one year for complying with this requirement. However, this request must be filed within the original term, requires “just cause”, and requires a continuing bona fide intention to use the mark on the goods or services. If a timely requested extension lacks “just cause” or has other defects, there is a risk that the registration could later be challenged.

The three (3) year term described above applies to applications or registrations whose filing date is on or after July 12, 2011. For earlier ones, the term was five (5) years.

Declaration of Continued Use

A declaration of continued use and specimen must be filed between an application or registration¹s 5th and 6th years as of its filing date. For example, if the registration was filed on March 1, 2014, then the declaration would be due on or during the year ending March 1, 2020.

There is an automatic six-month grace period for filing the declaration of continued use, subject to a higher filing fee.

The declaration of continued use only has to be filed during the registration¹s initial term of ten (10) years. In other words, after the registration has been renewed, a 6th year declaration is not required.

This requirement applies to trademark applications or registrations whose filing date is on or after December 16, 2009. For earlier ones, this requirement did not apply.

Renewal and Declaration of Use

A renewal petition and a separate declaration of use with specimen must be filed during the year prior to expiration of a registration’s original or subsequent ten (10) year term. For example, if the registration was filed on March 1, 2010, then a renewal petition and declaration of use is due during the year ending March 1, 2010.

There is an automatic six (6) month grace period for complying with this requirement, subject to a higher filing fee.

This requirement applies to all trademark registrations, regardless of their filing date.

Declaration of Incontestability

All trademarks registered in Puerto Rico may become “incontestable” if several requirements are met, including filing a declaration of incontestability within one (1) year following any consecutive five (5) year period of uninterrupted use of the mark subsequent to its registration¹s filing date. For example, if an application was filed on March 1, 2013 based on intended use, if use began on March 1, 2014, and if use has been uninterrupted, then a declaration of incontestability may be filed during the year ending March 1, 2020.

A specimen is not required for these declarations.