uspto.gov
Skip over navigation

FAQs After Filing an International Application

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.  

Back to top

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.

Back to top

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 mpu@uspto.gov. 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.

Back to top

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.

Back to top

May an international application be amended through the USPTO?

No. Once an international application is submitted to the USPTO, it cannot be amended, changed, or corrected in any way.  The applicant must contact the IB with any questions of concerns.

Back to top

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.

Back to top

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.

Back to top

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.

Back to top

May an applicant submit their response to the IB's irregularity notice regarding reclassification and/or amendment to the goods and/or services directly to the IB?

No.  If the irregularity concerns goods and/or services or classification, the applicant's response must be submitted through the USPTO, preferably one month before the due date.

Back to top

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.

Back to top

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.

Back to top

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/.

Back to top

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.

Back to top

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.

Back to top

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.

Back to top

United States Patent and Trademark Office
This page is owned by Trademarks.
Last Modified: 9/23/2012 10:50:10 AM