Madrid: Tips for Paper Filers
On November 1, 2004, the United States Patent and Trademark Office (USPTO) deployed electronic forms for the filing of an application for international registration, subsequent designation, and response to a notice of irregularity. These forms can be accessed from http://www.uspto.gov/teas/index.html .
However, Madrid paper filings are also still acceptable. If filing in paper , please note the following:
1. Use of Official WIPO Forms Required
a) International applications and subsequent designations
The International Bureau of the World Intellectual Property Organization (IB) requires that international applications and subsequent designations be submitted on an official form. See Rules 9(2) and 24(2)(b) of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (Common Regulations). The official forms of the International Bureau are available online at the World Intellectual Property Organization (WIPO) website: http://www.wipo.int/madrid/en .
* MM2 is the official form for international applications under the Madrid Protocol
* MM4 is the official form for subsequent designations.
The form must be typed or printed using a machine. If the form is handwritten, the IB will not accept it. When submitting an international application or subsequent designation on paper, you should complete the official WIPO form online at: www.wipo.int/madrid/en , print it out, and submit it to the USPTO. Completed subsequent designations may also be filed directly at the International Bureau.
The International Bureau's Guide to the International Registration of Marks (Guide) contains instructions for completing the international application form. See Guide at B.II.07.01 -20.11. The Guide is available online at: http://www.wipo.int/madrid/en .
Special Tip on Priority Claims. If the application that is the basis for the priority claim is also a basic application for the international application, you must include the U.S. application serial number and filing date in both Box 5 (Basic application section) and Box 6 (Priority claimed section).
b) Responses to irregularity notices
The International Bureau does not have an official form for responses to irregularity notices. Applicants submitting paper responses to the USPTO for forwarding to the International Bureau should include with their response: (1) the USPTO control number assigned to the international application upon certification; and (2) a copy of the International Bureau's irregularity notice. Please be advised that you cannot pay fees for correcting irregularities in an international application to the USPTO. You must pay irregularity fees directly to the International Bureau.
2. Payment of U.S. Fees Required at Time of Submission
a) U.S. Certification fee required with international application
You must pay the required U.S. certification fee(s) when you file your international application on paper. 37 C.F.R. §7.6. The USPTO charges $100.00, per class, if the international application is based on one basic U.S. application or registration, and $150.00, per class, if the international application is based on more than one basic U.S. application or registration. 37 C.F.R. §7.11(a)(9).
If the U.S. certification fee submitted with a paper international application is insufficient, the USPTO will reject the international application. The certification fee is not refundable. If the USPTO rejects the international application for any reason, the certification fee will not be refunded. 37 C.F.R. §7.13(b).
b) U.S. Transmittal fee required with subsequent designation
A U.S. transmittal fee is required if you submit a subsequent designation to the USPTO for forwarding to the International Bureau. The USPTO charges a transmittal fee of $100.00, per class, for a subsequent designation. 37 C.F.R. §7.6.
If the U.S. transmittal fee for a paper subsequent designation is insufficient, the USPTO will reject the subsequent designation. The transmittal fee is not refundable. If the subsequent designation is not transmitted for any reason, the USPTO will not refund the fee. 37 C.F.R. §7.21(d).
3. Payment of International Fees Must Be Made to the International Bureau
If you submit an international application or subsequent designation to the USPTO on paper, you cannot pay the international fees through the USPTO in U.S. dollars. All international fees must be paid to the International Bureau in Swiss currency. The schedule of international fees, individual fees and the International Bureau Fee Calculator are available on the WIPO website at: http://www.wipo.int/madrid/en . The USPTO will no longer forward checks submitted with your international application or subsequent designation to the International Bureau. See Notice: Madrid Protocol Modes of Payment Change - Effective January 1, 2008.
a) The International Bureau will accept the following forms of payment:
1) Debit to a current account established with the International Bureau ( see below for information on opening an account );
2) Payment made to WIPO’s Swiss postal check accountAccount number (IBAN): CH03 0900 0000 1200 5000 83) Payment made to WIPO's bank account at Credit Suisse ( see below at c. for payment instructions )
at SWISS POST/Postfinance - Engehaldenstrasse 37 - 3030 Bern
4) Payment made by Credit Card
In the context of electronic communications, fees due may be paid by credit card where an electronic interface for online payment has been made available by the International Bureau
Administrative Instructions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto, Section 19 (January 2005). As amended by Information Notice No. 20/2007- http://www.wipo.int/edocs/madrdocs/en/2007/madrid_2007_20.doc
b) Requests to open an account with the International Bureau should be sent to:
World Intellectual Property Organization (WIPO)
Finance Division - Income Section
34, chemin des Colombettes
CH-1211 Geneva 20
Telephone: (41-22) 338 91 11
Facsimile: (41 22) 734 46 93
c) Payment to the International Bureau bank account with Credit Suisse may be made at:
Credit Suisse - 1211 Geneva 70 - Switzerland
Account name: WIPO/OMPI
Account number (IBAN): CH51 0483 5048 7080 8100 0
SWIFT code: CRESCHZZ12A
Information required under Rule 34(5) of the Common Regulations must accompany payment made to the bank. The applicant must also complete the required information on the fee calculation sheet of the International Bureau's official form.
Please be advised that the USPTO cannot assist paper filers in calculating the appropriate international fees or in selecting a method of payment of fees to the International Bureau. Questions concerning payment of international fees made directly at the International Bureau should be directed to the International Bureau by mail to the World Intellectual Property Organization, 34 chemin des Colombettes, P.O. Box 18, CH-1211 Geneva 20, Switzerland; by telephone at 41 22 338 9111; by fax to 41 22 740 1429; or by e-mail to email@example.com .
4. Special Mailing Address for Paper Submissions
International applications, subsequent designations and responses to irregularity notices submitted on paper should be mailed to:
Madrid Processing Unit
600 Dulany Street
Alexandria, VA 22314-5793
The USPTO has established this separate mailing address to receive paper submissions of international applications, subsequent designations and responses to irregularity notices in order to facilitate special handling of these documents. The use of any other USPTO mailing address may cause considerable delays in processing these documents.
Please be advised that the above address is only for the paper submission of international applications, subsequent designations and responses to irregularity notices. Any other trademark-related document mailed to this address will not be accepted and will be returned to the sender.
5. Use of Self Addressed, Stamped Postcard Encouraged
You should include a self-addressed, stamped postcard when you submit an international application, subsequent designation or response to an irregularity notice to the USPTO on paper. Upon receipt, the USPTO will place a control number assigned to your correspondence and a label indicating the receipt date on the postcard and return it to the party who filed the paper. You should reference the control number whenever you contact the USPTO about your correspondence.
6. Express Mail Rule Applies to Paper Submissions
If an international application or subsequent designation is mailed to the USPTO via the Express Mail Service of the United States Postal Service, the USPTO will deem that the document was submitted on the day it was deposited as Express Mail, provided that the filer complies with the requirements for correspondence sent by Express Mail as set forth in 37 C.F.R. §2.198.
7. Hand or Courier Delivery of Paper Submissions
International applications, subsequent designations and responses to irregularity notices delivered by hand or courier to the USPTO should be taken directly to the Trademark Assistance Center (TAC). TAC is located at:
James Madison Building - East Wing
600 Dulany Street
TAC is open from 8:00 a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on holidays. TAC will accept deliveries during regular business hours.
Please be advised that TAC will only accept hand and courier deliveries of international applications, subsequent designations and responses to irregularity notices. TAC will not accept any other trademark-related documents.
8. Notice Sent to Paper Filers
a) International Applications
If the USPTO certifies your international application and forwards it to the International Bureau, the Madrid Processing Unit (MPU) will send a notice of certification. If the USPTO does not certify the international application, the MPU will send a letter setting forth the reason(s) why the international application was not certified. The USPTO will not refund the certification fee(s).
b) Subsequent Designations
The USPTO will notify you in writing as to whether your subsequent designation has been forwarded to the International Bureau. If the USPTO does not forward your subsequent designation to the International Bureau, the MPU will return your papers with a notice as to the reason(s) why. The transmittal fee will not be refunded.
c) Responses to Irregularity Notices
If the USPTO forwards your response to an irregularity notice to the International Bureau, the MPU will send you a printed notice to that effect. If your response is not forwarded, the MPU will return your papers with a printed notice of the reason(s) for rejection.