- Can a subsequent designation be submitted through the USPTO for forwarding to the International Bureau?
Yes. If the holder of an international registration is a national of, has a domicile in, or has a real and effective business or commercial establishment in the United States and the international registration is based on a U.S. application or registration, then the subsequent designation may be submitted to the USPTO using either the electronic form provided or on paper. A USPTO transmittal fee is required in either case. The holder also has the option of filing a subsequent designation directly with the International Bureau.
- What is the duration of an international registration?
An international registration lasts for ten years from the date of registration and may be renewed for additional 10-year periods by paying a renewal fee to the International Bureau.
- If the U.S. Application or registration that forms the basis of the international registration is abandoned, cancelled or expires, will the international registration be cancelled?
Possibly yes. For the first 5 years, the international registration is completely dependent on the U.S. basic application or registration. This means that, during the first 5 years of the life of the international registration, if the U.S. basic application or registration is refused, withdrawn, cancelled or restricted, in whole or in part, then the International Bureau will cancel the international registration. A refusal or cancellation of a basic application or registration after the end of the 5-year period will also result in the cancellation of the international registration, if the action that caused the refusal or cancellation began within that 5-year period. However, after the 5-year period has ended, the international registration becomes independent of the basic application or registration.
- After the mark in an international application registers, can the holder of the international registration request an extension of protection in additional countries?
Yes. The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties. A subsequent designation may also be used to extend protection to goods or services that were not originally extended to the previously designated Contracting Parties. For example, if a trademark owners sought international registration of five classes of goods and services, but limited the initial designation to only one class of goods to the identified Contracting Parties, the holder of the international registration can later designate any or all of the goods/services covered by the international registration to both those countries previously identified or to new countries designated in the subsequent designation.
- Can an international applicant claim a priority filing date based on a U.S. basic application?
Yes. A claim of priority in an international application may be based on a U.S. application in accordance with Article 4 of the Paris Convention even if the filing date of the basic application precedes the implementation date of the Madrid Protocol in the United States. The international application must both (1) assert a claim of priority and (2) be filed in the USPTO within six months after the filing date of the basic application that forms the basis of the priority claim.
- What happens after the International Bureau registers the mark in the international application?
Once the International Bureau registers the mark, the International Bureau will notify each Contracting Party designated in the international registration of the request for an extension of protection to that country. Each designated Contracting Party will then examine the request for an extension of protection the same as it would a national application under its laws. If the application meets the requirements for registration of that country, then the Contracting Party will grant protection of the mark in its country.
There are strict time limits for refusing to grant an extension of protection (a maximum of 18 months). If a Contracting Party does not notify the International Bureau of any refusal of an extension of protection within the time limits set forth in Article 5(2) of the Madrid Protocol, the holder of the international registration is automatically granted protection of its mark in that country.
- Will the International Bureau automatically register the mark in an international application once it has been certified by the USPTO?
No. Certification by the USPTO is only to ensure that the international application is properly based on a U.S. application or registration and to validate the date of receipt of the international application by the USPTO. The International Bureau must still review the international application to determine whether it meets the Madrid Protocol filing requirements. If the requirements are met and the fees paid, the International Bureau will then register the mark, publish it in the WIPO Gazette of International Marks (WIPO Gazette), send a certificate to the international applicant, now called "holder of the international registration", and notify the Offices of the Contracting Parties designated in the international application. The WIPO Gazette is published electronically and may be viewed on the WIPO web site at:http://www.wipo.int/madridgazette/en/.
- What is a Notice of Irregularity with respect to an International Application?
If the Madrid Protocol filing requirements have not been met, the International Bureau will send a notice to both the USPTO and the international applicant that explains the problems with the application. These notices are referred to as "Notices of Irregularity." Responses to irregularity notices must be received by the International Bureau within the time period indicated in the irregularity notice.
Certain irregularities require remedy by the USPTO as the office of origin. In such cases, the applicant must respond to the irregularity and submit the response to the USPTO. The response will be reviewed, and if acceptable, forwarded to the International Bureau. The USPTO provides an electronic form for submission of the response available athttp://teasi.uspto.gov/TEASi . Please see Tips for Filers of Responses to Notices of Irregularity.
- How can a U.S. trademark owner file an international application with the USPTO?
An international application may be filed electronically using the Trademark Electronic Application System (TEAS) for International Applications. Electronic forms are accessible at http://teasi.uspto.gov/TEASi . An international application may also be filed on paper using the official form issued by the International Bureau of the World Intellectual Property Organization available online at http://www.wipo.int/madrid/en . For further information, please see the Tips for Paper Filers.
- What other electronic Madrid Protocol forms are available?
Currently, the USPTO offers three stand alone forms: 1.) Application for International Registration, 2.) Subsequent Designation of an International Registration, to extend protection of goods/services to additional countries or extend protection of additional goods/services to previously designated countries, and 3.) Response to a Notice of Irregularity. As of September 12, 2009, TEAS global form options for the Request to Note Replacement and the Transformation of a cancelled International Registration into a National Application were made available. These options are self-completing and do not provide prompts or wizard questions to create the form. Beginning February 1, 2010, the USPTO began accepting the filing of Affidavits of Continue Use or Excusable Nonuse under Section 71 through a global form option. For a filing of incontestability, the stand-alone TEAS Section 15 form should be used, until such time as a TEAS Combined Section 71 and Section 15 form could be developed. Note in this regard that what is being filed is NOT a Section 73 filing. Section 73 only indicates what the timeframe for filing the Section 15 actually is.
- What happens after the international application has been submitted to the USPTO?
If the international application meets the requirements of 37 C.F.R. §7.11(a), then the USPTO will certify that certain information in the international application is the same as the information in the U.S. basic application or registration and forward the international application to the International Bureau.
If the international application does not meet the requirements of 37 C.F.R. §7.11(a), then the USPTO will not certify the international application. The USPTO will notify the international applicant of the reasons why the international application cannot be certified. The certification fee is not refundable. The international applicant may promptly resubmit a corrected international application based on the same U.S. application or registration. The certification fees must be included with the new submission.
- What are the requirements for submitting an international application through the USPTO?
To file an international application through the USPTO, an applicant must have a U.S. application, called a "basic application" or a U.S. registration, called a "basic registration." The mark and the owner of the international application must be the same as the mark and the owner of the basic application or registration. The international application may be based on more than one USPTO application or registration provided the mark and the owner are the same for each basic application and/or registration.
The international application must include a list of goods and services that is identical to or narrower than the list of goods or services in the basic application or registration. The international applicant must pay the U.S. certification fee(s) at the time of submission and identify at least one Contracting Party in which an extension of protection (that is, registration in a Contracting Party) is sought.
A list of the minimum requirements for obtaining a date of receipt of an international application in the USPTO is set forth in 37 C.F.R. §7.11(a). See notice of final rules published in the Federal Register, 68 FR 55748 (Sept. 26, 2003).
The requirements for a complete international application are set forth in Article 3 of the Protocol and Rule 9 of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (Common Regulations). The Common Regulations are currently available on the WIPO website at http://www.wipo.int/madrid/en/ .
- When did the Madrid Protocol become effective in the United States?
The Madrid Protocol went into effect in the United States on November 2, 2003. As of that date, U.S. trademark owners became able to submit an international application to the USPTO to forward to the International Bureau in Geneva, Switzerland. Similarly, as of that date, foreign trademark owners could seek extension of protection of an international registration of a mark to the United States.
The Trademark Act has been amended by federal legislation to add provisions for implementing the Madrid Protocol in the United States. This amending legislation is called the Madrid Protocol Implementation Act (MPIA). The USPTO has also added new rules to the Trademark Rules of Practice for documents relating to the Madrid Protocol. The MPIA and the new rules are posted on the USPTO website at: www.uspto.gov .
- Who can submit an international application through the USPTO?
Any trademark owner with an application filed in or a registration issued by the USPTO and who is a national of, has a domicile in, or has a real and effective industrial or commercial establishment in the United States can submit an international application through the USPTO.
- What is the Madrid Protocol?
The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application." The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.
The resulting "international registration" serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark may be protected in their jurisdiction. Neither the Madrid Protocol nor the Madrid Agreement provide for registration of an "internationally effective" trademark.
- May an applicant file an appointment of representative for their international application through the USPTO?
No. Applicant must file the appointment directly with the IB on Form MM12.
- If the basic U.S. application abandons, or the basic U.S. registration cancels or expires, what will happen to the international registration?
The international registration will be cancelled, in whole or in part as appropriate, if the basic U.S. application abandons, or the basic U.S. registration cancels or expires within the first five years of the date the international registration is issued.
- May changes be made to the applicant's representative's name and/or address through the USPTO?
No. Applicant must submit the changes directly to the IB on Form MM10.
- May an applicant get a list of countries that are party to the Madrid Protocol from the USPTO website?
No. However, the list of countries is kept up to date at the IB's website http://www.wipo.int/madrid/en/members/.
- May the international application fees be split and paid by multiple forms of payment types at the time of filing online by electronic form or by paper?
No. Whether filing by electronic form or by paper form, using multiple methods of payment is not permissible.
- If an international application is denied certification by the USPTO, may an applicant resubmit or reuse the USPTO Reference Number assigned to the denied international application when a new international application is filed?
No. Applicant may not resubmit an international application using the same USPTO Reference Number. An new international application will receive a new USPTO Reference Number.
- If fees are due because of an IB's irregularity notice, may an applicant pay the fees through the USPTO?
No. Fees associated with an irregularity notice may not be submitted to the USPTO. They must be paid directly to the IB. See TMEP §1903.02 for information about the payment of fees to the IB.
- If an applicant fails to include priority data in an international application at the time of filing and now wants to add the information by amendment, may this be done through the USPTO?
No. Amendments are not permitted to an international application once it is submitted to the USPTO. Applicant may withdraw the international application and start over, if it has not been forwarded to the IB.
- May a subsequent designation be filed immediately after the filing of an international application to designate more countries?
No. The applicant must wait until the international application matures into an international registration issued by the IB. A subsequent designation may then be filed directly with the IB or through the USPTO, for a fee, using the appropriate TEAS form or on paper.
- May an applicant limit the goods and/or services in an international registration?
Yes. Applicant may either limit the goods and/or services at the time of filing the international application in the appropriate section of the form or limit them later with the International Bureau (IB) by submitting the required Form MM6 available at www.wipo.int/madrid/en/forms.
- How does one know if a petition to the Director to review the denial of certification of an international application has been filed by an applicant and processed by the USPTO?
By using the USPTO Reference Number assigned to an international application, information concerning an international application may be obtained in Trademark Status and Document Retrieval (TSDR) under the section titled "Madrid History" on the "Status" tab. Use the "Documents" tab of TSDR to view the actual petition that was filed and the processing documentation issued by the USPTO in granting or denying the petition.
- Who examines the petition to review the denial of certification of an international application?
The Petitions staff attorneys in the Office of the Commissioner for Trademarks (Petitions Office) handle all Madrid petitions in an expedited time frame.
- What happens if an applicant fails to include all of the intended designated countries?
The applicant should immediately send a request to withdraw the international application to the Madrid Processing Unit (MPU) mailbox at email@example.com. However, if the international application has already been assigned to a MPU Trademark Specialist for certification or automatically certified electronically, it may be too late.
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