uspto.gov
Skip over navigation

Examination Guide 2-03

 EXAM GUIDE NO. 2-03 

 GUIDE TO IMPLEMENTATION OF MADRID PROTOCOL IN THE UNITED STATES 

 October 28, 2003 

I.      OVERVIEW OF THE MADRID SYSTEM

II.     INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES

A.    Who Can File

B.     Minimum Requirements for Date of Receipt of International Application in USPTO

1.     International Application Must be Filed Through TEAS

2.     Basic Application or Registration Number

3.     Name and Address of Applicant

4.     Reproduction (Drawing) of Mark

5.     Color Claim

6.     Identification of Goods/Services

7.     Classification in International Applications

8.     List of Contracting Parties

9.     Fees

10.   Statement of Entitlement

11.   Description of Mark

12.   Indication of Type of Mark

13.   E-Mail Address

C.    Certification of International Application in USPTO

D.    Date of International Registration

E.     IB Requirements for Complete International Application.

F.     Examination of Application by IB

G.    Irregularities in International Application

1.     Fee Irregularities

2.     Classification of Goods and Services

3.     Identification of Goods and Services

4.     Irregularities that Must Be Remedied by the USPTO

5.     Other Irregularities Must Be Remedied By Applicant

6.     Filing Directly With the IB

H.    Subsequent Designation - Request for Extension of Protection Subsequent to International Registration

1.     USPTO Requirements

2.     Irregularities in Subsequent Designation

I.      Dependence & “Central Attack”:  Restriction, Abandonment, Cancellation or Expiration of Basic Application or Registration During First 5 Years

J.      Transformation When the USPTO is the Office of Origin

K.    USPTO Must Notify IB of Division or Merger of Basic Application or Registration

L.     Representative

III.   PAYMENT OF INTERNATIONAL FEES THROUGH THE USPTO

IV. REQUEST FOR EXTENSION OF PROTECTION OF INTERNATIONAL REGISTRATION TO THE UNITED STATES

A.    Filing Request for Extension of Protection to United States

1.     Section 66(a) Basis

2.     Filing Date

3.     Declaration of Intent to Use Required

4.     Use Not Required

5.     Priority

6.     Filing Fee

7.     Constructive Use

8.     Cannot be Based on USPTO Basic Application or Registration

B.     Examination of Request for Extension of Protection to the United States

1.     Examined as Regular Application

2.     Examination of Identification and Classification of Goods/Services in §66(a) Applications

3.     Mark Must Be Registrable on Principal Register

4.     Refusal Must Be Made Within 18 Months

5.     Issuing Office Actions

6.     Correspondence Address

7.     Mark Cannot Be Amended

8.     Jurisdiction

C.    Notice of Refusal

1.     Notice Must be Sent Within 18 Months

2.     Requirements for Notice of Refusal

3.     What Happens After Notification of Refusal

4.     Refusal Pertaining to Less Than All the Goods/Services

5.     Confirmation or Withdrawal of Provisional Refusal

D.    Opposition

E.     Certificate of Extension of Protection

F.     Assignment of Extension of Protection to the United States

G.    Invalidation of Protection in United States

H.    Cancellation of International Registration By IB

I.      Transformation to Application Under §1 or §44

1.     Requirements for Transformation

2.     Examination of Transformed Application

J.      Renewal of Registered Extension of Protection to the United States

K.    Affidavits of Use or Excusable Nonuse

L.     Incontestability

M.    Replacement

N.    Amendment of Registered Extension of Protection to the United States

V.    RENEWAL OF INTERNATIONAL REGISTRATIONS

VI.   COMMUNICATIONS WITH INTERNATIONAL BUREAU REGARDING INTERNATIONAL REGISTRATIONS

A.    Recording Changes in International Register

1.     Change in Ownership of International Registration

2.     Restriction of Holder's Rights of Disposal

3.     Change of the Holder's Name or Address

4.     Change of Name or Address of Representative

5.     Limitation, Renunciation, Cancellation of International Registration

6.     Correction of Errors in International Registration

7.     Merger of International Registrations

8.     License

9.     No Other Changes Can Be Made

B.     USPTO Will Receive Notices of Changes in International Registration

VII.  DIVISION OF REGISTRATIONS


This sets forth the procedures for implementation of the Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”).  The MPIA is effective November 2, 2003.  The MPIA provides that: (1) the owner of a U.S. application or registration may seek protection of its mark in any of the countries party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) by submitting a single international application to the International Bureau of the World Intellectual Property Organization (“IB”) through the United States Patent and Trademark Office (“USPTO”); and (2) the owner of an application or registration in a country party to the Madrid Protocol may obtain an international registration from the IB and request an extension of protection of the international registration to the United States. 

The MPIA is posted on the USPTO website at  http://www.uspto.gov/web/trademarks/PL107_273.htm#D .  A Final Rule, published in the Federal Register on September 26, 2003, at 68 FR 55748, is posted at  http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf .

The Madrid Protocol, Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (April 2002) (“Common Regs.”), and Guide to International Registration (2002) are currently available on the IB's website at  http://www.wipo.int/madrid/en/ .  The Common Regs. are the procedures agreed to by the parties to the Madrid Protocol regarding the administration of the Madrid Protocol, pursuant to Article 10(2)(iii).

Website addresses cited in this guide were available as of October 27, 2003.

I.  OVERVIEW OF THE MADRID SYSTEM

The Madrid system of international registration is governed by two treaties:  the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which became effective December 1, 1995.  The United States is party only to the Protocol, not to the Agreement. 

The Madrid system is administered by the IB.  To apply for an international registration under the Protocol, an applicant must be a national of, be domiciled in, or have a real and effective business or commercial establishment in one of the countries or intergovernmental organizations that are members of the Protocol (“Contracting Parties”).  The application must be based on a trademark application filed in or registration issued by the trademark office of one of the Contracting Parties (“basic application” or “basic registration”).  The international application must be for the same mark and include a list of goods/services that is identical to or narrower than the list of goods/services in the basic application or registration.  The international application must designate one or more Contracting Parties in which an extension of protection of the international registration is sought. 

The applicant must submit the international application through the trademark office of the Contracting Party in which the basic application or registration is held (“Office of Origin”).  The Office of Origin must certify that the information in the international application corresponds with the information in the basic application or registration.  If the IB does not receive the international application within 2 months of the date it was received by the Office of Origin, the date of the international registration will be the date the international application was received by the IB. 

The international registration is dependent on the basic application or registration for five years.  If the basic application or registration is abandoned, cancelled or expired, in whole or in part, during this five-year period, the IB will cancel the international registration.  See section II.I below for further information.

The holder of an international registration may request protection in additional Contracting Parties by submitting a subsequent designation.  A subsequent designation is a request by the holder of an international registration for an extension of protection of the registration to additional Contracting Parties. 

Each Contracting Party designated in an international application or in a subsequent designation will examine the request for extension of protection as a national application under its laws.  Under Article 5 of the Protocol and Common Regs. 16 and 17, there are strict time limits (a maximum of 18 months) for the trademark office of a Contracting Party to enter a refusal of an extension of protection.  If the Contracting Party does not notify the IB of a refusal within this time period, the mark is automatically protected.  However, the extension of protection may be invalidated in accordance with the same procedures for invalidating a national registration, e.g. , by cancellation. 

The Madrid Protocol may apply to the USPTO in three ways:

  • Office of Origin .  The USPTO is the Office of Origin if an international application or registration is based on an application pending in or a registration issued by the USPTO.  See Section II below. 
  • Office of a Designated Contracting Party.  The USPTO is the Office of a Designated Contracting Party if the holder of an international registration requests an extension of protection of that registration to the United States.  See Section IV below.
  • Office of the Contracting Party of the Holder.   If the holder of an international registration is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States, the holder can file certain requests with the IB through the USPTO, such as requests to record changes of ownership (see section VI.A.1 below) and restrictions on the holder's right to dispose of an international registration (see section VI.A.2 below).  The expression “Contracting Party of the Holder” includes the “Office of Origin.”  Common Reg. 1(xxvi bis ).

II.  INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES

This section covers international applications and registrations originating from the United States, i.e. , international registrations based on an application pending in the USPTO or a registration issued by the USPTO.  See Section IV below for information about requests for extension of protection to the United States by the holder of an international registration originating from another country.  International applications originating from the United States will be processed by the USPTO's new Madrid Processing Unit (“MPU”).

A.  Who Can File

Under Section 61 of the Trademark Act and Article 2(1) of the Protocol, a qualified owner of an application pending in the USPTO or a qualified owner of a registration granted by the USPTO may file an application for international registration through the USPTO.  To qualify, the international applicant must:

(1)    Be a national of the United States;

(2)    Be domiciled in the United States; or

(3)    Have a real and effective industrial or commercial establishment in the United States.

If joint applicants file, each applicant must meet these requirements.  Common Reg. 8(2).

B. Minimum Requirements for Date of Receipt of International Application in USPTO

The minimum requirements for a date of receipt of an international application in the USPTO are set forth in 37 C.F.R. §7.11.

1.  International Application Must be Filed Through TEAS

An international application must be filed through the Trademark Electronic Application System (“TEAS”).  37 C.F.R. §7.11(a). 

TEAS will require the applicant to select between two different forms, a prepopulated form or a free-text form.  The applicant can use the prepopulated form if: (1) the international application is based on a single basic application or registration; (2) the data from the basic application or registration has been entered into the Trademark Status and Document Retrieval (“TSDR”) database; and (3) applicant's changes to the international application are limited to:

  • Narrowing the list of goods or services;
  • Changing the classification; and/or
  • Changing the applicant's address.

For all other international applications, the applicant must fill in all the fields in the free-text form.

If the international application is based on a newly filed application, the applicant can check TSDR at http://tsdr.uspto.gov/ to determine whether the basic application data has been entered.  If it has not yet been entered, the applicant must use the free-text form.

The prepopulated form will automatically display the exact information that is in the USPTO database for one specific U.S. serial number or registration number.  If the applicant does not make any changes to this data, the international application will be certified and forwarded directly to the IB without MPU review of the data. 

Certain data fields on the prepopulated form can be changed ( e.g ., narrowing the scope of the identification of goods and/or recitation of services in the U.S. application or registration); however, if the applicant changes any data on the prepopulated form, an MPU paralegal must review the international application before it can be certified and sent to the IB.

If the applicant uses the free-text form, an MPU paralegal must review the application before it can be certified. 

2. Basic Application or Registration Number  

The international application must include the filing date and serial number of the basic application, or the registration date and registration number of the basic registration.  37 C.F.R. §7.11(a)(1).

3.    Name and Address of Applicant  

An international application must include the name and current address of the applicant.  The name of the applicant must be identical to the name of the applicant/registrant in the basic application or registration.  37 C.F.R. §7.11(a)(2).  If the international applicant is not the record owner of the basic application or registration, the applicant must record the assignment (or other document transferring title) with the Assignment Services Division of the USPTO prior to filing the international application. 

On the prepopulated form, the applicant's name cannot be changed, so the international applicant's name will always be identical to the name of the owner of the basic application or registration. 

When the applicant submits a free-text form, an MPU paralegal will check the TRAM (Trademark Reporting and Monitoring) System to verify that the name of the owner of the basic application or registration is identical to the name of the international applicant.  If the names are identical and all other requirements have been met, the MPU paralegal will certify and forward the international application to the IB. 

If the names are not identical, the MPU Paralegal will check the Assignment Database to determine whether an assignment or other document affecting title that is not reflected in TRAM has been recorded in the Assignment Services Division.  If Assignment records do not show a clear chain of title to the international applicant, the USPTO will notify the applicant that the application cannot be certified.  If Assignment records do show a clear chain of title, the MPU Paralegal will update the ownership field in TRAM.

Because a delay in certifying and forwarding an international application to the IB may affect the date of the international registration, any request to record a change in ownership of a U.S. basic application or registration should be filed well in advance of the filing of the international application to allow sufficient processing time.  The USPTO strongly recommends use of the Electronic Trademark Assignment System (ETAS), at http://etas.uspto.gov .  Assignments filed electronically are recorded much more quickly than assignments filed by mail.  If there is an unrecorded change in ownership, and the international applicant does not use ETAS to record the change, it is unlikely that the USPTO will be able to certify or forward the international application to the IB within two months after the application was received in the USPTO.  In this situation, the date of the international registration will be the date of receipt of the application in the IB. 

Recording a document with the Assignment Services Division may not change the record of ownership in TRAM and TSDR, the databases maintained by the Trademark Operation.  For certain documents recorded on or after November 2, 2003, the USPTO will automatically update TRAM and TSDR, even if the new owner does not file a request to change the ownership information in the trademark databases.  See Exam Guide No. 1-03, section V.  For documents recorded before November 2, 2003, and documents recorded on or after November 2, 2003, that do not meet the criteria set forth in Exam Guide No. 1-03, the new owner must notify the Trademark Operation in writing that ownership has changed, and request that the ownership field in the trademark databases be updated.  37 C.F.R. §3.85. 

If an owner of a U.S. basic application or registration has filed a request to record a change of ownership, the owner should check the TSDR database at http://tsdr.uspto.gov/ , to determine whether the ownership information in the Trademark databases has been updated before submitting an international application.  TSDR contains the same information as TRAM.  If a change of ownership that has been recorded with the Assignment Services Division is not reflected in TRAM and TSDR, the new owner should file a written request that the Trademark Operation update its databases with the new owner information. 

4.    Reproduction (Drawing) of Mark

An international application must include a reproduction of the mark that (1) is the same as the mark in the basic application or registration; and (2) meets the requirements of 37 C.F.R. §2.52.  37 C.F.R. §7.11(a)(3).  If the applicant uses the prepopulated form, TEAS will prepopulate the international application with the reproduction from the basic application or registration, or create a reproduction of the word mark. 

Standard Character Reproductions.   If an applicant wants to claim standard characters, the applicant should check the appropriate box in TEAS.  In the free-text form, applicant must type the mark in the appropriate field or attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c).  37 C.F.R. §2.53(a).  The USPTO's standard character chart will be posted on the USPTO website and linked to TEAS forms. 

Special Form Reproductions.   If the mark is in special form, the reproduction must be a digitized image of the mark that is in .jpg format and scanned at no less than 300 dots per inch and no more than 350 dots per inch, with a length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels.  All lines must be clean, sharp and solid, not fine or crowded, and produce a high quality image when copied.  37 C.F.R. §§2.52(c) and 2.53(c).  TEAS will generate a digitized image using the reproduction in the basic application or registration.  If the quality of the image generated by TEAS is poor, the applicant may attach a higher quality digitized image.

Use of Color.   If the mark in the basic application or registration is depicted in black and white and does not include a color claim, the reproduction of the mark in the international application must be black and white.  If the mark in the basic application or registration is in color, the reproduction of the mark in the international application must be in color.  If the mark in the basic application or registration is depicted in black and white and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark.  37 C.F.R. §7.11(a)(3). 

The USPTO will begin accepting color reproductions on November 2, 2003.  For applications filed on or after this date, the USPTO will no longer accept black and white reproductions with a color claim, or reproductions that show color by the use of lining.  37 C.F.R. §2.52(b)(1).  See Exam Guide No. 1-03, section I.B.1.

As noted above, if the mark is depicted in black and white in the basic application or registration and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark that meet the requirements of Trademark Rule 2.52.  37 C.F.R. §7.11(a)(3); Common Reg. 9(4)(a)(vii).  For example, if the basic application or registration included a color claim and depicted the color on the reproduction by the use of color lining or by a statement describing the color, the applicant must include both a color reproduction of the mark and a black and white reproduction of the mark.  If the applicant uses the prepopulated TEAS form, TEAS will prepopulate the international application with a black and white reproduction that is identical to the mark in the basic application or registration, and the applicant must attach a color reproduction that meets the requirements of Trademark Rules 2.52 and 2.53 for reproductions filed through TEAS.  37 C.F.R. §§2.52(c) and 7.11(a)(3).

5.    Color Claim  

If color is claimed as a feature of the mark in the basic application and/or registration, the international application must include a statement that color is claimed as a feature of the mark and set forth the same name(s) of the color(s) claimed in the basic application and/or registration.  37 C.F.R. §7.12(a).   

If the basic application or registration includes a description of the mark indicating that color is used on the mark, or a reproduction that is lined for color, the USPTO will presume that color is a feature of the mark, unless the basic application or registration   includes a statement that “no claim is made to color” or “color is not a feature of the mark.”  TMEP §807.09(d).  For applications filed on or after November 2, 2003, if the drawing shows color, the applicant must include a claim that color is a feature of the mark.  37 C.F.R. §2.52(b)(1).     

If color is not claimed as a feature of the mark in the basic application and/or registration, the applicant may not claim color as a feature of the mark in the international application.  37 C.F.R. §7.12(b). 

6.    Identification of Goods/Services  

An international application must include a list of goods/services that is identical to or narrower than the goods/services in the basic application or registration.  37 C.F.R. §7.11(a)(7). 

The prepopulated form will include the list of goods/services in the basic application or registration.  The applicant may edit the list of goods/services by either deleting particular goods/services or revising the wording of the identification.  In the free-text form, the applicant must enter the goods/services manually, and may omit goods or services, or revise the wording of the identification.  

7.    Classification in International Applications

The goods/services must be classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”).  37 C.F.R. §7.11(a)(7).  Failure to properly classify goods or services in an international application according to the international classification system will result in an IB notice of irregularity.  Because the final decision on the classification of the goods/services in an international application rests with the IB, the USPTO will not reclassify or give advice as to the reclassification of goods/services.  The IB provides guidance on its website at  http://www.wipo.int/classifications/en/

If the goods or services in the basic application or registration are classified in Classes A, B or 200 (which are not part of the international classification system) or are classified in other classes under the old U.S. classification system, it is advisable to reclassify the goods/services into international classes in the international application.  Amendment of the corresponding basic U.S. application or registration is not permitted in this situation.  In addition, if the identification of goods in the basic application or registration comprises kits or gift baskets, it is advisable for the international applicant to either narrow the identification in order to classify the goods in a single International Class, or pay additional fees for additional International Classes. 

The MPU does not certify classification of the goods/services in the international application.  Therefore, the owner of the United States application or registration does not have to classify the goods/services in the international application in the same class(es) in which they are classified in the United States basic application or registration.  Both the prepopulated form and the free-text form will allow an applicant to change the classification of goods/services in an international application.   

In the situations discussed below, it is advisable for the international applicant to reclassify the goods in the international application, in order to avoid a notice of irregularity from the IB. 

 U.S. Classes A, B & 200 

Classes A, B & 200 are classes from the old U.S. classification system that are still used in the United States to classify certification marks for goods (Class A), certification marks for services (Class B) and collective membership marks (Class 200).  These classes are not included in the International Classes under the Nice Agreement.  Therefore, an international application based on a U.S. application or registration in U.S. Classes A, B or 200 should be reclassified.  If the applicant does not reclassify its goods or services into the proper International Class, the IB will issue a notice of irregularity.

U.S. Classes A & B

It has been the longstanding practice in the United States to accept identifications of goods or services for these classes that are broader than those that would be accepted in applications for goods/services in other classes.  TMEP §1306.06(f).  In many situations, it will be difficult to reclassify these broad identifications into appropriate International Classes.  For example, a goods certification mark in U.S. Class A for “remanufactured, refurbished and reconditioned electrical equipment” could include goods in International Classes 7, 9 and/or 11, and possibly others.  In a situation like this, the U.S. applicant should specify the type of electrical equipment that is being certified, and either apply in and pay the fees for all appropriate classes, or limit the specification of “electric equipment” to cover goods in one class only.   

In some certification mark applications/registrations, the goods/services will be easily classified in one class of the International Classification system.  For example, a services certification mark for “testing laboratory and calibration laboratory accreditation services” would be classified in International Class 42.  However, it is important to be aware that multiple classes may be required when reclassifying goods/services in U.S. Classes A and B.

U.S. Class 200

Class 200 presents a similar problem and a similar solution.  A broad identification of the subject organization in a collective membership mark application or registration is difficult to reclassify.  For example, the wording “indicating membership in a conservative youth organization” is too broad and vague for classification in an International Class.  On the other hand, “indicating membership in an organization of consulting communications engineers” is easily classified in International Class 42.  As with the certification marks, an applicant may have to clarify, specify, or narrow the description of the organization in the international application in order to classify the organization in an International Class.

 Kits, Gift Baskets 

The USPTO policy regarding the identification and classification of kits and gift baskets differs from the policy of the IB regarding the classification of these goods. 

The USPTO permits registration of a kit or gift basket in a single International Class, even if the identification of goods lists items that are classified in other classes.  The IB and most foreign countries will not accept an identification of goods in a particular class that includes a reference to goods that are classified in other classes.  If an international application includes kits and gift baskets, and the identification of goods refers to items classified in more than one class, the IB is likely to issue a notice of irregularity requiring the applicant to separate out the goods into appropriate classes and pay any additional fees for added classes.  To avoid a notice of irregularity, an international applicant may wish to either narrow the identification to refer only to items in a single International Class, or submit additional fees for multiple International Classes. 

8.    List of Contracting Parties  

An international application must list at least one Contracting Party ( i.e ., country or intergovernmental organization party to the Madrid Protocol) in which the applicant seeks an extension of protection of the international registration.  37 C.F.R. §7.11(a)(8).  If the goods/services in the international application are not the same for all designated Contracting Parties, the application must include a list of the goods/services in the international application that pertain to each designated Contracting Party.

9.    Fees  

The international application must include the USPTO certification fee, and the international fees for all classes and all designated Contracting Parties.  37 C.F.R. §7.11(a)(9).  See section III below regarding fees. 

10.  Statement of Entitlement  

An international application must include a statement that the applicant is entitled to file an international application, specifying that the applicant: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States.   Where an applicant's address is not in the United States, the applicant must provide the address of the U.S. domicile or establishment.  Section 61 of the Trademark Act, 15 U.S.C. §1141a, 37 C.F.R. §7.11(a)(10).

For joint applicants, the application must include a statement of entitlement for each applicant.

11.  Description of Mark  

If the basic application or registration included a description of the mark, the international application must include the same description.  37 C.F.R. §7.11(a)(5).   

12.  Indication of Type of Mark  

The international application must include an indication of the type of mark, if the mark in the basic application or registration is a three-dimensional mark, a sound mark, a collective mark, or a certification mark.  37 C.F.R. §7.11(a)(6).

13.  E-Mail Address  

The international application must include an e-mail address for receipt of correspondence from the USPTO.  37 C.F.R. §7.11(a)(11).

 C.   Certification of International Application in USPTO

Under Section 62 of the Trademark Act, 15 U.S.C. §1141b, if the information contained in the international application corresponds to the information in the basic application or basic registration, the USPTO will certify the international application and forward it to the IB. 

Under Article 3(1) of the Protocol and Common Reg. 9(5)(d), the USPTO must sign the international application and certify:

  • The date on which the USPTO received the international application;
  • That the mark in the international application is the same as the mark in the basic application or registration;
  • That the applicant is the same person or entity listed as the owner of the basic application or registration;
  • That the goods/services identified in the international application are covered by the basic application or registration;
  • That the applicant is qualified to file an international application under Section 61 of the Trademark Act and Article 2(1);
  • That, if the international application includes a description of the mark, the description is consistent with the basic application or registration (Common Regs. 9(4)(a)(xi) and 9(5)(d)(iii));
  • That, if the international application indicates that the mark is a color or combination of colors, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viibis) and 9(5)(d)(iii));
  • That, if color is claimed as a feature of the mark in the basic application or registration, the same claim is included in the international application (Common Reg. 9(5)(d)(v));
  • That, if the international application indicates that the mark is three-dimensional, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viii) and 9(5)(d)(iii));
  • That, if the international application indicates that the mark is a sound mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(ix) and 9(5)(d)(iii));
  • That, if the international application indicates that the mark is a collective or certification mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(x) and 9(5)(d)(iii)).

If an applicant uses the prepopulated TEAS form without changing any of the information (see section II.B.1 above), the international application will be certified and forwarded directly to the IB without MPU review.  In all other cases, an MPU paralegal must review the data in the international application before it can be certified. 

If the international application meets the requirements of 37 C.F.R. §7.11(a), the USPTO will certify the international application and send it electronically to the IB.  37 C.F.R. §7.13(a). 

If the application does not meet the requirements of 37 C.F.R. §7.11(a), the USPTO will not certify or forward the application.  The USPTO will refund any international fees paid through the USPTO; however the USPTO certification fee is not refundable.  37 C.F.R. §7.13(b).  The applicant should receive immediate notification of the deficiency, either through a TEAS error message or an e‑mail notification.  The applicant can promptly refile a corrected international application through TEAS, with the required international fees and USPTO certification fee. 

D.   Date of International Registration

If the IB receives the international application within 2 months of the date of receipt in the USPTO, the date of the international registration will be the date of receipt in the USPTO.  If the IB does not receive the international application within 2 months of the date of receipt in the USPTO, the date of the international registration will be the date of receipt in the IB.  Article 3(4); Common Reg. 15. 

Common Reg. 15 sets forth the IB's minimum requirements that may affect the date of the international registration:

  • Adequate identification of the applicant with sufficient information to contact the applicant or the applicant's representative;
  • Reproduction of the mark;
  • Indication of the goods or services; and
  • Designation of Contracting Party or Parties for which extension of protection is sought.

If any of these elements is omitted from the international application, the IB will notify both the applicant and the USPTO.  If the missing element(s) is received in the IB within 2 months of the date of receipt of the international application in the USPTO, the international registration will bear the date of receipt of the international application in the USPTO.  If the missing element(s) is not received in the IB within 2 months of the date of receipt of the international application in the USPTO, the date of the international registration will be the date of receipt of the last of the missing elements in the IB.  In either case, the missing element(s) must be received in the IB on or before the deadline specified in the notice of irregularity.  Article 3(4); Common Reg. 15(1). 

See section II.G below for information about correcting irregularities in an international application. 

E.   IB Requirements for Complete International Application.

The international application requirements are set forth in Article 3 of the Protocol and Common Reg. 9.  The USPTO will not examine the international application to determine whether it is complete.  If the application meets the minimum requirements set forth in 37 C.F.R. §7.11(a), the USPTO will certify the application and send it to the IB.  The IB will examine it for completeness.  The requirements for a complete international application originating from the United States are:

  • Name and Address . The name and address of the applicant;
  • Basic Application(s) or Registration(s). The serial number and filing date of the basic application(s), or the number and date of the basic registration(s). The international application may be based on more than one basic application or registration;
  • Entitlement to File . An indication that the applicant is (1) a national of the United States; (2) domiciled in the United States; or (3) has a real and effective industrial or commercial establishment in the United States (Common Reg. 9(5)(b));
  • Fees . The international application must include the basic filing fee charged by the IB; the supplementary fee for each class of goods and services beyond 3 classes; the complementary fee for designation of each country to which extension of the international registration is sought; and the transmittal fee that the USPTO charges to process the international application. Articles 8(1) and 8(2); Common Regs. 9(4)(a)(xiv), 10(2) and 34.
  • Goods/Services . A list of the goods or services on or in connection with which the applicant seeks international registration (Article 3(2); Common Reg. 9(4)(a)(xiii));
  • Class . The international class of goods or services, if known (Article 3(2); Common Reg. 9(4)(a)(xiii));
  • Reproduction (Drawing) of Mark. A clear reproduction of the mark that is no more than 8 cm high by 8 cm wide. Common Reg. 9(4)(a)(v). The mark must be the same as the mark in the basic application or registration. If the mark in the basic application or registration has color, the mark in the international application must be in color. If the mark in the basic application or registration is black and white, the mark in the international application must be in black and white. If the mark in the basic application or registration is presented in black and white but contains a color claim, the applicant must submit both a black and white and a color reproduction. Common Reg. 9(4)(a)(vii);
  • Color . If color is claimed as a distinctive feature of the mark, the international application must include an indication to that effect, and must set forth the name of the color(s) (Article 3(3); Common Reg. 9(4)(a)(vii)).
    If the mark in the basic application or registration consists of color(s), the international application must include a statement to that effect (Common Reg. 9(4)(a)(viibis));
  • Contracting Parties. The names of the Contracting Party or Parties in which the applicant seeks protection (Common Reg. 9(4)(a)(xv);
  • Declaration of Intent to Use . A verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application, if any of the Contracting Parties designated in the international application require such a declaration (Common Reg. 9(5)(f)). Under Common Reg. 7(2), a Contracting Party may notify the IB that it requires a signed declaration of intention to use the mark.
  • Transliteration . If the mark consists of or contains non-Latin characters or numerals other than Arabic or Roman numerals, a transliteration of that matter in Latin characters and Arabic numerals (Common Reg. 9(4)(a)(xii));
  • Signature . The USPTO must sign the international application. The IB does not require the applicant's signature (Common Reg. 9(2)(b));
  • Three-Dimensional Mark. If the mark is three-dimensional, the indication "three-dimensional mark" (Common Reg. 9(4)(a)(viii));
  • Sound Mark . If the mark is a sound mark, the indication "sound mark" (Common Reg. 9(4)(a)(ix));
  • Collective or Certification Mark. If the mark is a collective mark or a certification mark, an indication to that effect (Common Reg. 9(4)(a)(x));
  • Standard Characters. If the applicant wishes that the mark be considered as a mark in standard characters, an indication to that effect (Common Reg. 9(4)(a)(vi));
  • Language . International applications originating from the United States must be in English. 37 C.F.R. §7.3; Common Regs. 6(1)(b) and 6(2)(b)(iii).
  • Description of Mark. If there is a description of the mark in the basic application or registration, the international application must include the same description. 37 C.F.R. §7.11(a)(5) and Common Reg. 9(4)(a)(xi).

Additional Elements That May Be Included in International Application

The following elements may also be included, but are not mandatory under the Common Regulations. 

  • Translation . If the mark consists of or contains non-English wording, an English translation (Common Reg. 9(4)(b)(iii));
  • Citizenship/State of Incorporation or Organization (Common Regs. 9(4)(b)(i) and (ii)). The citizenship of the applicant(s); or
  • If the applicant is a juristic person, the state or nation under the laws of which the applicant is organized;
  • Disclaimer . If the applicant wishes to disclaim any element of the mark, the applicant may do so (Common Reg. 9(4)(b)(v));
  • Representative . See section II.L below;
  • Priority . An international applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if: (1) the international application contains a claim of priority; and (2) the filing date of the application that forms the basis of the priority claim (within the meaning of Article 4 of the Paris Convention) was not more than six months before the date of the international registration. Article 4(2) and Common Reg. 9(4)(a)(iv); Guide to International Registration, Para. B.III.07.08 (2002). The applicant must specify the serial number (if available), filing date and country of the earlier filing. If the earlier filing does not relate to all the goods/services listed in the international application, the applicant must set forth the goods/services to which it does relate.

F.    Examination of Application by IB

Upon receipt of an international application, the IB enters the information contained in the application into its database and determines whether the application meets the IB's minimum filing requirements (see Common Reg. 15) and includes the required fees.  If the requirements have been met and the fees have been paid, the IB will immediately register the mark.  The registration is published in the WIPO Gazette of International Marks .  The IB sends a certificate to the holder, and notifies the Office of Origin and the Offices of the designated Contracting Parties to which extension of the registration is sought.  Article 3(4); Common Reg. 14(1). 

G.   Irregularities in International Application  

If an international application is unacceptable, the IB will notify both the applicant and the USPTO of the “irregularity.”  Some types of irregularities must be remedied by the USPTO, some must be remedied by the applicant, and some may be remedied by either the applicant or the USPTO.  See 37 C.F.R. §7.14 and Common Reg. 11. 

The MPU paralegals will review all incoming notices of irregularities.  If the irregularity is one that must be remedied by the USPTO (see section II.G.4 below), the MPU paralegal will respond to the notice and send the applicant a copy of the response by e-mail.  

If the irregularity is not one that must be remedied by the USPTO, the USPTO will note receipt of the notice of irregularity in its automated records, but will not take any other action.  The USPTO will not respond to the notice on behalf of the applicant.  The USPTO will not send a copy of the notice to applicant, because the IB has already notified the applicant of the irregularity. 

To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IB's notice.  Receipt in the USPTO does not fulfill this requirement .  When correcting irregularities through the Office, the applicant should submit the response as soon as possible, at least one month before the end of the response deadline set forth in the IB's notice.  The USPTO will not process any response submitted after the IB response deadline.  37 C.F.R. §7.14(e). 

1.    Fee Irregularities

Where fees paid through the USPTO are insufficient, the IB will notify both the applicant and the USPTO of the deficiency.  If the fee is not received by the IB on or before the deadline set forth in the IB's notice of irregularity, the international application is abandoned. 

Fees for correcting irregularities in an international application must be paid directly to the IB , even if the applicant is filing a response to correct other irregularities through the USPTO.  37 C.F.R. §7.14(c).  At this time, the USPTO's automated system cannot process fees to correct fee irregularities in an international application.

2.    Classification of Goods and Services

If the IB finds an irregularity in classification, it will make a proposal and send it to both the applicant and the USPTO.  The notice will state whether any additional fees are due.  Common Reg. 12(1). 

The applicant cannot send its response directly to the IB.  The response must be submitted through the USPTO.  The IB must receive the response within 3 months of the date of the IB notification.  37 C.F.R. §7.14(b); Common Reg. 12(2).  The applicant must use TEAS.  37 C.F.R. §7.14(e). 

The USPTO will not review the response, but will forward it to the IB and notify the applicant accordingly by e-mail.  If the IB does not receive a response within 2 months of the date of the IB's notice of irregularity, the IB will send a reminder to both the applicant and the USPTO.  Common Reg. 12(3).  The USPTO will note the reminder in its records, but will not take any action. 

If additional fees are due as a result of the reclassification, the applicant must pay the fees directly to the IB.  Applicants can establish accounts with the IB to handle fee payments.  If an applicant has an account with the IB, the applicant may pay the fees by providing the account number in the response filed with the USPTO.  If the applicant does not have a current account with the IB, the applicant must pay the fees directly to the IB. 

Under Article 3(2) of the Protocol, the IB controls classification.  If the applicant timely responds to the classification irregularity notice, the IB will notify both the USPTO and the applicant if the IB modifies, withdraws or maintains its proposal.  

3.    Identification of Goods and Services

If the IB determines that the identification of goods/services is too vague or is incomprehensible or is linguistically incorrect, it will notify both the applicant and the USPTO.  Common Reg. 13.  The IB may include a suggested amendment in the notification.  The applicant cannot send a response directly to the IB.  Any response regarding the identification of goods/services must be sent through the USPTO within 3 months of the date of the IB notification.  37 C.F.R. §§7.14(a) and 7.14(b); Common Reg. 13(2).  The applicant must use TEAS.  37 C.F.R. §7.14(d). 

The MPU paralegal will review the applicant's response to ensure that the goods/services identified in the response are within the scope of the identification in the basic application or registration at the time the response is filed.  If the goods/services in the basic application or registration have been amended since the date the international application was submitted to the Office, the goods/services in the response to the IB notice must be within the scope of the amended goods/services.  If the response includes goods/services that exceed the scope of the goods/services in the basic application or registration as amended, the MPU paralegal will reject the response and notify the applicant.  If there is time remaining in the IB response period, the applicant may submit a corrected response.  If the amended goods/services do not exceed the scope of the goods/services in the basic application or registration as amended, and the IB response period has not expired, the MPU will certify the goods/services and forward the response to the IB. 

If no proposal acceptable to the IB for remedying the irregularity is made within 3 months, and all other requirements have been met, the IB will either (1) include the term in the international registration with an indication that the IB considers the term to be unacceptable, if the class of the vague term was specified in the application; or (2) if the class was not specified, delete the term and notify both the USPTO and the applicant accordingly.  Common Reg. 13(2)(b). 

 4.    Irregularities that Must Be Remedied by the USPTO 

The following irregularities must be remedied by the USPTO within 3 months of the date of notification of the irregularity to avoid abandonment of the international application:

  • Application is not presented on the official form or is not typed;
  • Omission of reproduction of mark;
  • Omission of list of goods/services;
  • Omission of designation of Contracting Party or Parties;
  • Insufficient identification of applicant;
  • Irregularities relating to the entitlement of the applicant to file an international application;
  • Application not signed by USPTO (Signature may be replaced with seal);
  • Certification by USPTO is defective;
  • Omission of date and number of basic application or registration.

Common Regs. 11(4) and 15(1).

These elements will be required in the TEAS form, and the USPTO will send the data electronically to the IB.  This should ensure that the above elements are not omitted.  Thus, the USPTO anticipates very few notices of irregularity that must be remedied by the USPTO.

If the USPTO does not cure the irregularity within 3 months, the international application is abandoned.  Common Regs. 11(4)(b) and 11(5).

When responding to a notice of an irregularity that must be remedied by the USPTO, the MPU paralegal will send the applicant a copy of the response. 

 5.    Other Irregularities Must Be Remedied By Applicant

Other irregularities to be remedied by applicant include insufficient information about the applicant's representative; missing transliteration; insufficient information about a priority claim; unclear reproduction of the mark; color claim with no color reproduction; and insufficient fees paid directly to the IB by the applicant.  The applicant must remedy the irregularities within 3 months of the date of the notification.  Common Reg. 11(2). 

An applicant may either file the response directly with the IB, or file the response through the USPTO.  To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IB's notice.  Receipt in the USPTO does not fulfill this requirement.  If submitting a response through the USPTO, an applicant must use TEAS.  37 C.F.R. §7.14(e). 

The USPTO will not review the response to the irregularity but will forward the response to the IB, and notify the applicant accordingly by e-mail. 

6.    Filing Directly With the IB

Information about filing directly with the IB is available on the WIPO website, currently at  http://www.wipo.int/madrid/en/ .  An applicant may contact the IB 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 intreg.mail@wipo.int .

H.   Subsequent Designation - Request for Extension of Protection Subsequent to International Registration

A subsequent designation is a request by the holder of an international registration for an extension of protection of the registration to additional Contracting Parties.  The requirements for a subsequent designation are set forth in Article 3 ter (2) of the Protocol and Common Reg. 24.  The holder may file the subsequent designation directly with the IB.  There is a form for filing directly with the IB on the IB website at  http://www.wipo.int/madrid/en/ .

A holder may file a subsequent designation through the USPTO only if (1) the international registration is based on a basic application filed with the USPTO or a basic registration issued by the USPTO, and (2) the holder is a national of, is domiciled in, or has a real and effective business or commercial establishment in the United States.  Section 64 of the Trademark Act, 15 U.S.C. §1141d; 37 C.F.R. §7.21(a).

1.    USPTO Requirements

The minimum requirements for a date of receipt of a subsequent designation in the USPTO are set forth in 37 C.F.R. §7.21(b):

  • Filing through TEAS;
  • The international registration number; 
  • The name and address of the holder of the international registration;
  • A statement that the holder is entitled to file a subsequent designation through the USPTO, specifying that holder:  (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States.  Where a holder's address is not in the United States, the holder must provide the address of its U.S. domicile or establishment;
  • A list of goods/services that is identical to or narrower than the goods/services in the international registration;
  • A list of the Contracting Parties designated for an extension of protection;
  • The international fees for all classes and all Contracting Parties identified in the subsequent designation;
  • The USPTO transmittal fee; and
  • An e-mail address for receipt of correspondence from the USPTO.

The USPTO does not certify subsequent designations.  If a subsequent designation meets the requirements listed above, the USPTO will forward it to the IB.  37 C.F.R. §7.21(c).  If the subsequent designation does not meet these requirements, the USPTO will not forward the subsequent designation, and will notify the holder of the reasons.  Any international fees paid through the USPTO will be refunded.  The USPTO transmittal fee is nonrefundable.  37 C.F.R. §7.21(d).

The subsequent designation will bear the date of receipt in the USPTO, provided that the IB receives it within two months of that date.  If the IB does not receive the subsequent designation within two months of the date of receipt in the USPTO, the subsequent designation will bear the date of receipt in the IB.  Common Reg. 24(6)(b).

If the subsequent designation meets the requirements of Common Reg. 24, the IB will record it and notify both the USPTO and the holder of the recordation.  Common Reg. 24(7).  A request for extension of protection made in a subsequent designation expires on the same date as the international registration.  Common Reg. 31(2).  See section V below regarding renewal of international registrations.

2.    Irregularities in Subsequent Designation

If a subsequent designation is sent to the IB through the USPTO, the IB will notify both the holder and the USPTO of any irregularity.  Common Reg. 24(5)(a).  Corrections of any irregularity in a subsequent designation must be sent directly to the IB, even if the subsequent designation was sent through the USPTO.  The USPTO will make note of the notice of irregularity in its automated records, but will not take any other action.  See 37 C.F.R. §7.21(e).

I.    Dependence & “Central Attack”:  Restriction, Abandonment, Cancellation or Expiration of Basic Application or Registration During First 5 Years

For a period of 5 years from the date of the international registration, the registration is dependent on the basic application or basic registration.  Article 6(3).  Under §63 of the Trademark Act, 15 U.S.C. §1141c, and Article 6(4) of the Protocol, the USPTO must notify the IB if the basic application or registration is restricted, abandoned, cancelled, or expired, with respect to some or all of the goods/services listed in the international registration:

(1)    Within 5 years after the international registration date; or

(2)    More than 5 years after the international registration date if the restriction, abandonment, or cancellation of the basic application or basic registration resulted from an action that began before the end of the 5-year period.

The IB will cancel (or restrict) the international registration accordingly.  Article 6(4); Common Reg. 22(2)(b).  This is sometimes called “central attack.” 

The USPTO must notify the IB if there is an appeal, opposition or cancellation proceeding (or a court proceeding, if the USPTO is aware of the proceeding) pending at the end of the 5-year period.  The USPTO must notify the IB of the final decision once the proceeding is concluded.  Common Regs. 22(1)(b) and (c).  The IB will record this notice in the International Register and notify the holder and the designated Contracting Parties.

J.    Transformation When the USPTO is the Office of Origin

If the IB cancels an international registration as a result of the cancellation or restriction of the USPTO basic application and/or USPTO basic registration under Article 6(4) (see section II.I above), the holder may “transform” the international registration into national applications in the offices of the Contracting Parties that were designated for extension(s) of protection in the international registration.  Transformation must be requested within 3 months from the date of cancellation of the international registration.  Article 9 quinquies .  The goods/services in the national application(s) must have been covered by the cancelled international registration.  The filing date for the new application(s) that results from the transformation of an extension of protection will be the international registration date (or the date of recordal of the subsequent designation requesting an extension of protection to that Contracting Party). 

Transformation of an extension of protection may take place only if the IB cancels or restricts the international registration at the request of the USPTO, due to cancellation of the USPTO basic application or USPTO registration.  It is not available if the international registration is cancelled at the request of the holder, or expires for failure to renew.  Transformation is not available at the Office of Origin.

The request for transformation must be filed directly with the designated Contracting Party, and will be examined as a regular application under the law of that Contracting Party.  The IB is not involved. 

See section IV.I below regarding transformation of a request for extension of protection to the United States into an application under §1 or §44 of the Trademark Act.

K.   USPTO Must Notify IB of Division or Merger of Basic Application or Registration

Under Common Reg. 23, an Office of Origin must notify the IB if the basic application or registration is divided into several applications or registrations, or if several applications or registrations are merged into a single application or registration, within 5 years after the date of the international registration. 

L.   Representative

An applicant for or holder of an international registration may appoint a representative before the IB by indicating the representative's name in the appropriate box on the international application or subsequent designation form.  Common Reg. 3(2)(a).  The applicant/holder may also appoint a representative in a subsequent communication submitted to the IB (see section VI.A.4 below).  Common Reg. 3(2)(b).  There is a form for appointing a representative on the IB website at  http://www.wipo.int/madrid/en/

See section IV.B.6 below regarding the correspondence address in a request for extension of protection to the United States.  

III.  PAYMENT OF INTERNATIONAL FEES THROUGH THE USPTO

International Fees .  An applicant/holder may pay fees directly to the IB.  See Common Regs. 34 to 38 regarding payment of fees.  There is a fee calculator and a schedule of fees on the IB website at  http://www.wipo.int/madrid/en/ , and the TEAS forms include a link to the IB fee calculator. 

An applicant/holder may also pay certain fees through the USPTO.  Common Reg. 34(2).  Under 37 C.F.R. §7.7(a), the USPTO has agreed to collect and forward only the following international fees: 

  • International application fee;
  • Subsequent designation fee; and
  • Recording fee for change of ownership of international registration.

An applicant/holder has 3 options for payment of fees for international filings sent to the IB through the USPTO:

(1)    Applicant/holder can establish an account with the IB for debiting fees, and include the account number on filings;

(2)    Applicant/holder may pay the fees directly to the IB, and provide the USPTO with an IB receipt number; or

(3)    Applicant/holder can pay the fees to the USPTO in U.S. dollars by credit card, EFT, or USPTO deposit account.

37 C.F.R. §7.7(b).

If applicant/holder uses the third option and pays the fees to the USPTO in U.S. dollars, the USPTO will convert the fee and submit it to the IB in Swiss currency. 

Fees to Correct Irregularities Must be Paid Directly to the IB .  Fees for correcting irregularities in an international application must be paid directly to the IB, even if the applicant is filing a response to correct other irregularities through the USPTO.  37 C.F.R. §7.14(c).

IV.  REQUEST FOR EXTENSION OF PROTECTION OF INTERNATIONAL REGISTRATION TO THE UNITED STATES

A.   Filing Request for Extension of Protection to United States

The holder of an international registration may file a request for extension of protection to the United States.  Section 66(a) of the Trademark Act, 15 U.S.C. §1141f.  The request for extension of protection to the United States may be included in the international application, or in a subsequent designation made after the IB registers the mark.  The IB will transmit the request for extension of protection to the United States to the USPTO electronically.  The USPTO will refer to a request for extension of protection to the United States as a “§66(a) application.”  37 C.F.R. §7.25(b). 

1.    Section 66(a) Basis

Section 66(a) of the Trademark Act provides a new basis for filing in the United States.  See 37 C.F.R. §2.34(a)(5).  A §66(a) applicant cannot change the basis or claim more than one basis.  37 C.F.R. §§2.34(b)(3) and 2.35(a). 

2.    Filing Date

If a request for extension of protection of an international registration to the United States is made in an international application, the filing date of the §66(a) application is the international registration date.  If a request for extension of protection to the United States is made in a subsequent designation, the filing date of the §66(a) application is the date that the subsequent designation was recorded by the IB.  37 C.F.R. §7.26. 

3.    Declaration of Intent to Use Required

A request for extension of protection to the United States must include a declaration that the applicant has a bona fide intention to use the mark in commerce that can be controlled by the United States Congress.  Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a).  The declaration must include a statement that the person making the declaration believes applicant to be entitled to use the mark in commerce; and that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.  Section 60(5) of the Trademark Act, 15 U.S.C. §1141(5).  The declaration must be signed by (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. §10.1 who is authorized to practice before the USPTO who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.  37 C.F.R. §2.33(a).  The USPTO has provided the IB with wording for the declaration of the applicant's bona fide intention to use the mark in commerce, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection.  Instructions as to who is a proper party to sign the declaration pursuant to 37 C.F.R. §2.33(a) have also been provided to the IB. 

The verified statement is part of the international registration on file at the IB.  37 C.F.R. §2.33(e).  The examining attorney does not have to review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of the application. 

4.    Use Not Required  

Use in commerce prior to registration is not required.  Section 68(a)(3) of the Trademark Act, 15 U.S.C. §1141h(a)(3).  Under §71 of the Trademark Act, 15 U.S.C. §1141k, periodic affidavits of use or excusable nonuse are required to maintain a registered extension of protection.  See section IV.K below. 

5.    Priority  

A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention if:

(1)    The request for extension of protection contains a claim of priority;

(2)    The request for extension of protection specifies the filing date, serial number and the country of the application that forms the basis for the claim of priority; and

(3)    The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).

Section 67 of the Trademark Act, 15 U.S.C. §1141g; Madrid Protocol Article 4(2).

6.    Filing Fee

The filing fee for the §66(a) application will be sent to the USPTO by the IB.  Article 8 of the Protocol.  See Common Regs. 34 through 38 regarding international fees. 

7.    Constructive Use

Under §66(b) of the Trademark Act, 15 U.S.C. §1141f(b), unless extension of protection is refused, the filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c) of the Trademark Act, as of the earliest of the following:

(1)    The international registration date, if the request for extension of protection was filed in the international application; 

(2)    The date of recordal of the subsequent designation requesting extension of protection, if the request for extension of protection to the United States was made after the international registration date; or

(3)    The date of priority claimed pursuant to §67 of the Trademark Act.

8.    Cannot be Based on USPTO Basic Application or Registration

An international registration in which the United States is the Office of Origin ( i.e., an international registration based on a basic application pending in the USPTO or a basic registration issued by the USPTO) cannot be used to obtain an extension of protection to the United States.  Section 65(b) of the Trademark Act, 15 U.S.C. §1141e(b); Article 3 bis of the Protocol.  The IB will not send a request for extension of protection to the United States if the international registration is based on a USPTO basic application or registration. 

B.   Examination of Request for Extension of Protection to the United States

1.    Examined as Regular Application  

Under Section 68(a) of the Trademark Act, 15 U.S.C. §1141h, a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register.  It is unnecessary for the examining attorney to review the international registration on file at the IB, since the IB will forward all the necessary information with the request for extension of protection. 

Except for 37 C.F.R. §§2.130-2.131, 2.160-2.166, 2.168, 2.172, 2.173, 2.175, and 2.181-2.186, all rules in 37 C.F.R. Part 2 apply to a request for extension of protection of an international registration to the United States, including sections related to proceedings before the Trademark Trial and Appeal Board, unless stated otherwise.  All rules in 37 C.F.R. part 10 also apply to requests for extension of protection.  37 C.F.R. §7.25(a). 

2.    Examination of Identification and Classification of Goods/Services in §66(a) Applications

The examining attorney will examine a §66(a) application, including the identification of goods/services, according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051 and 1126.  Specifically, the Examining Attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO's Manual of Acceptable Identification of Goods and Services (“USPTO ID Manual”) whenever possible. 

However, under Article 3(2) of the Protocol, the IB controls classification.  The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration.  Guide to International Registration Para. B.III.43.05 (2002).  Therefore, the international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB, even if the IB's classification of goods/services in the §66 application is different from the classification set forth in the USPTO ID Manual.

Accordingly, if the mark in a §66(a) application appears to be a certification or collective membership mark, the USPTO will not reclassify it into U.S. Class A, B or 200.  However, the applicant must comply with all other U.S. requirements for certification and collective membership marks, regardless of the classification chosen by the IB.  See TMEP §§1304 et seq . and 1306 et seq .

3.    Mark Must Be Registrable on Principal Register  

There is no provision in the Trademark Act for registration of a mark in a request for an extension of protection on the Supplemental Register.  If the proposed mark is not registrable on the Principal Register, the extension of protection must be refused.  Section 68(a)(4) of the Trademark Act, 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c). 

4.    Refusal Must Be Made Within 18 Months  

Under §68(c) of the Trademark Act and Article 5 of the Protocol, the USPTO must notify the IB of any refusal entered in a §66(a) application within 18 months of the date the IB sends the request for extension of protection to the USPTO.  See section IV.C below. 

5.    Issuing Office Actions

The USPTO will send the first Office action in a §66(a) application to the IB.  The IB will send it to the holder (applicant).  The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO. 

6.    Correspondence Address

The USPTO will accept a notice of change of the correspondence address in a §66(a) application or a registered extension of protection to the United States, and will send correspondence to the new address.  See TMEP §§603 et seq . regarding the procedures for establishing and changing the correspondence address in the USPTO.  However, this will not change the representative designated in the international registration.  A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO.  There are forms on the IB website at  http://www.wipo.int/madrid/en/ .  See Common Reg. 36(i).

7.    Mark Cannot Be Amended

The Madrid Protocol and the Common Regulations do not permit amendment of a mark in an international registration.  If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application.  The IB's Guide to International Registration , Para. B.II.69.02 (2002), provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time.  If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application.  This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be (where such change is possible according to the law of the Contracting Party whose Office is the Office of origin).... 

Accordingly, because an application under §66(a) is a request to extend protection of the mark in an international registration to the United States, 37 C.F.R. §2.72 makes no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit any such amendments.  See notice at 68 FR 55748, 55756 (Sept. 26, 2003).

Similarly, after registration, a registrant cannot amend a mark under §7 of the Trademark Act.  See section IV.N below.

8.    Jurisdiction

The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act.  37 C.F.R. §2.84.  However, when deciding whether to grant requests for jurisdiction of §66(a) applications, the Director must consider the time limits for notifying the IB of a refusal of a §66(a) application, set forth in Article 5(2) of the Madrid Protocol and §68(c) of the Trademark Act.

C.   Notice of Refusal  

1.    Notice Must be Sent Within 18 Months  

Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit:

(1)    A notification of refusal based on examination;

(2)    A notification of refusal based on the filing of an opposition; or

(3)    A notification of the possibility that an opposition may be filed after expiration of the 18 month period.  If the USPTO notifies the IB of the possibility of opposition, it must send the notification of refusal within 7 months after the beginning of the opposition period or within one month after the end of opposition period, whichever is earlier. 

Section 68(c) of the Trademark Act, 15 U.S.C. §1141h(c); Article 5 of the Protocol.

If the USPTO does not send a notification of refusal of the request for extension of protection to the IB within 18 months, the request for extension of protection cannot be refused.  Section 68(c)(4) of the Trademark Act; Article 5(5); Madrid Reg. 17(2)(iv); Guide to International Registration Paras B.III.44.06 and B.III.45.03 (2002).  If the USPTO sends a notification of refusal, no grounds of refusal other than those set forth in the notice can be raised more than 18 months after the filing date of the request for extension of protection.  Section 68(c)(3) of the Trademark Act. 

2.    Requirements for Notice of Refusal

A final decision is not necessary; a provisional refusal is sufficient to meet the 18 month requirement.  Under Common Reg. 17, a notice of provisional refusal must be dated and signed by the USPTO and must contain:

  • The number of the international registration, preferably accompanied by an indication of the mark;
  • All grounds of refusal;
  • If there is a conflicting mark, the filing date, number, priority date (if any), the registration date and number (if available), the name and address of the owner, reproduction of the conflicting mark, and list of goods/services;
  • A statement that the provisional refusal affects all the goods and services, or a list of the goods/services affected;
  • The procedures and time limit for contesting the refusal, i.e., period for response or appeal of the refusal, and the authority with which an appeal can be filed;
  • If the refusal is based on an opposition, the name and address of the opposer.

Where refusal is based on examination, the notice should state that there is a possibility that the mark will later be opposed. 

The IB will record the provisional refusal in the International Register and transmit it to the holder of the registration.  Article 5(3); Common Reg. 17(4). 

If the USPTO's notification of refusal is deficient, the IB will notify both the holder and the USPTO of the irregularity.  Common Reg. 18. 

 3.    What Happens After Notification of Refusal

The holder of an international registration who applies for an extension of protection to the United States will receive the notification of refusal through the IB.  The holder must respond directly to the USPTO.  Standard examination procedures are used to examine §66(a) applications. 

 4.    Refusal Pertaining to Less Than All the Goods/Services 

Where a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark is protected for the remaining goods/services, even if the holder does not respond to the notification of refusal.  Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C. §§1141h(c) and 1141141h(c) and 1141i(a), provide that an application under §66(a) of the Trademark Act is automatically protected with respect to any goods or services for which the USPTO has not timely notified the IB of a refusal. 

Accordingly, 37 C.F.R. §2.65(a) provides that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to file a response or a complete response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services.  See Exam Guide No. 1-03, section III for further information about partial abandonment.   

 5.    Confirmation or Withdrawal of Provisional Refusal 

If the USPTO has sent a notice of provisional refusal, once procedures regarding the refusal are complete, the USPTO must notify the IB that (1) protection is refused for all goods/services; or (2) the mark is protected for all goods/services; or (3) the mark is protected for some specified goods/services.  Common Reg. 17(5).  The IB will record this and send it to the holder. 

D.   Opposition

Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act.  As noted above, the USPTO must notify the IB within 18 months of the filing date of the request for extension of protection of:  (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period. 

The notice must state the dates on which the opposition period begins and ends, if known.  If the dates are unknown, the USPTO must communicate them to the IB “at the latest at the same time as any notification of a provisional refusal based on an opposition.”  Common Reg. 16(1)(b).

Any notification of refusal on the basis of opposition must be received by the IB within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier.  Section 68(c)(2) of the Trademark Act, 15 U.S.C. §11411h(c)(2); Article 5(2)(c)(ii). 

An opposition to a §66(a) application must be filed through the Electronic System for Trademark Trials and Appeals (“ESTTA”).  37 C.F.R. §2.101(b)(2).  The notice of opposition must include all fees for each party opposer to oppose the registration in all classes specified in the opposition.  37 C.F.R. §2.101(d)(2).  Once filed, an opposition to a §66(a) application may not be amended to change or add to the grounds for opposition or to add to the goods or services opposed.  37 C.F.R. §2.107(b).

Request for Extension of Time to Oppose .  A request for extension of time to oppose a §66(a) application must be filed through ESTTA.  37 C.F.R. §2.102(a)(2). 

No more than three requests to extend the time for filing an opposition may be filed.  The time for filing an opposition may not be extended beyond 180 days from the date of publication.  37 C.F.R. §2.102(c).  This also applies to §1 and §44 applications.   

E.   Certificate of Extension of Protection

If the mark in a §66(a) application is published for opposition and is not opposed, or if the application survives all oppositions filed, the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Official Gazette .  Section 69(a) of the Trademark Act, 15 U.S.C. §1141i(a).  From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register.  Section 69(b) of the Trademark Act.  The certificate of registration will look the same as the certificate issued for registrations resulting from applications based on §§1 and 44 of the Trademark Act.

Upon registration, the USPTO will refer to an extension of protection to the United States as a “registration,” “registered extension of protection,” or a “§66(a) registration.”  37 C.F.R. §7.25(c). 

A registered extension of protection always remains part of the international registration.  In this respect, a registered extension of protection differs from a §44 registration.  Section 44 registrations exist independent of the underlying foreign registration.  15 U.S.C. §1126(f).

F.    Assignment of Extension of Protection to the United States

Under §72 of the Trademark Act, 15 U.S.C. §1141 l , an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol). 

Because the extension of protection remains part of the international registration, assignments of extensions of protection to the United States must be recorded at the IB.  The IB will notify the USPTO of any changes in ownership recorded in the International Register.  The USPTO will record only those assignments (or other documents of title) that have been recorded in the International Register, and will automatically update TRAM and TSDR to reflect these changes.  Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration or an extension of protection to the United States.  37 C.F.R. §7.22. 

See section VI.A.1 below regarding requests to record a change of ownership in the International Register. 

G.   Invalidation of Protection in United States

A registered extension of protection to the United States may be invalidated in an administrative or judicial proceeding, governed by U.S. law, such as a cancellation proceeding before the Trademark Trial and Appeal Board or a federal court proceeding.  The USPTO must notify the IB if an extension of protection to the United States is invalidated.  Article 5(6) of the Protocol.  The requirements for a notice of invalidation are set forth in Common Reg. 19.

H.   Cancellation of International Registration By IB

If the IB notifies the USPTO that the international registration has been cancelled with respect to some or all of the goods/services, the USPTO will cancel the extension of protection with respect to such goods/services as of the date that the IB cancelled the international registration.  Section 70(a) of the Trademark Act, 15 U.S.C. §1141j; 37 C.F.R. §7.30.

An international registration is dependent on the basic application and/or basic registration for 5 years after the date of the international registration.  Article 6(3) of the Protocol.  If the basic application or registration is restricted, abandoned, cancelled, or expired, with respect to some or all of the goods and services listed in the international registration, the Office of Origin will notify the IB, and the IB will cancel (or restrict) the international registration.  Article 6(4) of the Protocol.  See section II.I above. 

See section V below regarding renewal and expiration of international registrations. 

 I.    Transformation to Application Under §1 or §44

If the IB cancels an international registration in whole or in part at the request of the Office of Origin under Article 6(4) of the Protocol due to cancellation of the basic application or registration, the holder of the registration may “transform” the extension of protection into an application under §1 or §44 of the Trademark Act for registration of the same mark for any or all of the cancelled goods and services that were covered by the extension of protection of the international registration to the United States.  Section 70(c) of the Trademark Act, 15 U.S.C. §1141j; Article 9 quinquies of the Protocol.

1.    Requirements for Transformation

The request for transformation must be filed within 3 months after the date on which the international registration was cancelled, in whole or in part.  Article 9 quinquies (i); Section 70(c) of the Trademark Act.  The request must be filed through TEAS, and include: 

(1)    The serial number or registration number of the extension of protection to the United States;

(2)    The name and address of the holder of the international registration;

(3)    The application filing fee required by 37 C.F.R. §2.6(a)(1) for at least one class of goods or services; and

(4)    An e-mail address for receipt of correspondence from the USPTO.

37 C.F.R. §7.31(a).

The holder must file the request for transformation directly with the USPTO, and it will be examined as a regular application under U.S. law.  The IB is not involved and should not be notified of the filing of the request for transformation.  

Under §70(c) of the Trademark Act and Article 9 quinquies of the Protocol, transformation may take place only if the international registration is cancelled or restricted at the request of the Office of Origin under Article 6(4) of the Protocol, due to the cancellation of the basic application and/or registration .  It is not available if the international registration expires for failure to renew, or is cancelled or restricted at the request of the holder, or cancelled or restricted for any other reason. 

2.    Examination of Transformed Application

A new application under §1 or §44 of the Trademark Act must comply with all the requirements of the Trademark Act and Trademark Rules of Practice.  37 C.F.R. §7.31(c).  The USPTO will assign a new serial number, and will link the prosecution history of the §66(a) application to the new “transformed” application. 

The USPTO will treat the new application as if it had been filed on (1) the international registration date, if the request for extension of protection to the United States was made in the international application, or (2) the date of recordal of the subsequent designation with the IB, if the request for extension of protection to the United States was made in a subsequent designation.  If the extension of protection was entitled to priority under §67 of the Trademark Act, the new application is entitled to the same priority. 

If an examining attorney has already performed a search for conflicting marks, he or she does not have to conduct a new search, since the effective filing date will not change. 

The examining attorney should review the identification of goods/services to ensure that the goods/services set forth in the request for transformation are within the scope of the goods/services in the §66(a) application that were restricted, abandoned, cancelled, or expired.

If the mark in the §66(a) application has already been published or registered, republication will be required. 

Generally, in examining a “transformed” §66(a) application that has already been published or registered, the Office will only issue requirements or refusals concerning matters related to the §1 or §44 basis. 

The examining attorney should not require the applicant to change the classification in the transformed application from the classification given to the goods/services by the IB.  See section IV.B.2 above for further information about classification in international applications and registrations.

J.    Renewal of Registered Extension of Protection to the United States

Renewal of international registrations is handled by the IB, and governed by Article 7 of the Protocol and Common Regs. 29 - 31.  See section V below.

Under §70(b) of the Trademark Act, 15 U.S.C. §1141j(b), and Article 3 ter (2) of the Protocol, if the IB does not renew an international registration, the IB will notify the USPTO that the registration has expired.  The corresponding extension of protection to the United States will expire as of the expiration date of the international registration.  The USPTO will cancel the extension of protection. 

Section 9 of the Trademark Act does not require renewal of an extension of protection to the United States.  However, as noted below, the holder must file affidavits of use or excusable nonuse under §71 of the Trademark Act. 

K.   Affidavits of Use or Excusable Nonuse

Under §71 of the Trademark Act, 15 U.S.C. §1141k, an extension of protection to the United States will be cancelled unless the holder of the international registration periodically files affidavits of use in commerce or excusable nonuse (“§71 affidavit”).  The affidavits must include (1) a verified statement by the holder that the mark is in use in commerce, and a specimen of use, or (2) a verified statement setting forth that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.  These affidavits must be filed:

(1)    Between the 5th and 6th year after the date on which the USPTO issues the certificate of extension of protection; and

(2)    Within the 6-month period preceding the end of every 10-year period after the date on which the USPTO issues the certificate of extension of protection, or within a 3-month grace period with an additional surcharge. 

Section 71 provides a 3-month grace period for filing the 10-year §71 affidavit with an additional surcharge.  There is no grace period for filing the 6-year §71 affidavit.  Unlike §8(c)(2) of the Trademark Act, §71 does not provide for correction of deficiencies after expiration of the statutory filing period.  The requirements for a §71 affidavit are set forth in 37 C.F.R. §7.37. 

Since the §71 affidavit cannot be filed until 5 years after the USPTO registers an extension of protection, the USPTO will not accept these affidavits until after November 2, 2008. 

L.   Incontestability

Under Section 73 of the Trademark Act, 15 U.S.C. §1141m, if the holder files an affidavit that meets the requirements of Section 15 of the Trademark Act, an extension of protection to the United States will become “incontestable”.   

The USPTO will not accept these affidavits until after November 2, 2008. 

 M.  Replacement

If a U.S. national registration and a subsequently issued certificate of extension of protection to the United States are (1) owned by the same person, (2) identify the same mark, and (3) list the same goods or services, the extension of protection shall have the same rights as those accrued to the U.S. national registration at the time the certificate of extension of protection issues.  §74 of the Trademark Act, 15 U.S.C. §1141n; Article 4 bis of the Protocol; 37 C.F.R. §7.28(a).

Legally, replacement takes place automatically, by operation of law.  However, the USPTO will note the replacement in its records (and notify the IB accordingly) only if the holder of a registered extension of protection files a request that it do so.  A request to note replacement of a U.S. national registration with an extension of protection must include:

(1)    The serial number or registration number of the extension of protection to the United States;

(2)    The registration number of the replaced U.S. registration; and

(3)    The fee required by 37 C.F.R. §7.6.

See 37 C.F.R. §7.28(b).

The holder cannot file the request to note replacement of the U.S. national registration until the registration based on the request for extension of protection issues. 

“Replacement” does not invalidate the U.S. national registration.  The U.S. national registration remains on the register, with all the rights attaching to such a registration, so long as the holder renews the registration under §9 of the Trademark Act and files the necessary affidavits of use or excusable nonuse under §8 of the Trademark Act.  37 C.F.R. §7.29.  It is up to the holder to decide whether to maintain the replaced U.S. national registration. 

N.   Amendment of Registered Extension of Protection to the United States

All requests to record changes to an international registration must be filed at the IB.  Accordingly, the holder of a registered extension of protection of an international registration to the United States cannot file an amendment under §7 of the Trademark Act.  The USPTO will not accept an amendment of a registered extension of protection that has not been recorded in the International Register.  See section VI.A below regarding requests to record changes at the IB. 

V.  RENEWAL OF INTERNATIONAL REGISTRATIONS

The term of an international registration is 10 years, and it may be renewed for 10 years upon payment of the renewal fee.  Articles 6(1) and 7(1) of the Protocol.  Renewal of international registrations must be made at the IB, in accordance with Article 7 of the Protocol and Common Regs. 29 - 31.  There is a renewal form on the IB website at  http://www.wipo.int/madrid/en/ .

The USPTO will not process a request to renew an international registration nor forward it to the IB.  37 C.F.R. §7.41. 

The IB notifies the Contracting Parties designated for extensions of protection of renewal or non-renewal. 

See section IV.J above regarding renewal of an extension of protection to the United States.

VI.  COMMUNICATIONS WITH INTERNATIONAL BUREAU REGARDING INTERNATIONAL REGISTRATIONS

Information about communicating directly with the IB is available on the WIPO website, currently at  http://www.wipo.int/madrid/en/ .  The applicant may contact the IB 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 intreg.mail@wipo.int .

A.   Recording Changes in International Register

Requests to record changes to an international registration must be filed with the IB.  Such requests are governed by Articles 9 and 9 bis and Common Reg. 25.

There are only two limited situations in which these requests may be filed with the IB through the USPTO: 

(1)    an assignment that meets the requirements of 37 C.F.R. §7.23(a) (see section VI.A.1 below); or

(2)    a security interest or other restriction of a holder's right to dispose of an international registration (or the release of such a restriction) that meets the requirements of 37 C.F.R. §§7.24(a) and (b) (see section VI.A.2 below). 

37 C.F.R. §7.22.

All other requests to record changes must be filed with the IB.  There are forms for filing requests to record changes on the IB website at  http://www.wipo.int/madrid/en/ .

 1.    Change in Ownership of International Registration

The IB will record a change in ownership by assignment, merger, court decision, or operation of law, at the request of the holder, the Contracting Party of the holder, or an interested person (Article 9; Common Reg. 25(1)(a)(i)).  The change may relate to some or all of the goods/services in some or all of the designated Contracting Parties.  A fee is required. 

Most requests to record changes of ownership must be filed directly with the IB.  There is a form available on the IB website at  http://www.wipo.int/madrid/en/ .  The IB does not require copies of assignments or other supporting documents. 

The USPTO will accept for submission and forward to the IB a request to record a change of ownership only if:

(1)    the assignee cannot obtain the assignor's signature on the request to record the change; and

(2)    the assignee is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States. 

37 C.F.R. §7.23.

No other requests to record changes of ownership can be filed through the USPTO.  37 C.F.R. §§7.22 and 7.23. 

A request to record a change of ownership filed through the USPTO must include:

  • The international registration number;
  • The name and address of the holder of the international registration;
  • The name and address of the assignee of the international registration;
  • A statement that the assignee: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States. Where an assignee's address is not in the United States, the assignee must provide the address of its U.S. domicile or establishment;
  • A statement that the assignee could not obtain the assignor's signature for the request to record the assignment;
  • An indication that the assignment applies to the designation to the United States;
  • A statement that the assignment applies to all the goods/services in the international registration, or if less, a list of the goods/services in the international registration that have been assigned that pertain to the designation to the United States; and
  • The USPTO transmittal fee required by 37 C.F.R. §7.6 and the international fee(s) required by the IB to record the assignment.

37 C.F.R. §7.23(a).

If the request meets the requirements of 37 C.F.R. §7.23(a), the USPTO will forward it to the IB.  37 C.F.R. §7.23(b).  If the request does not meet these requirements, the USPTO will refuse to forward the request to the IB, and will notify the holder of the reasons.  The USPTO will not refund the transmittal fee.  37 C.F.R. §7.23(c). 

If a request to record a change sent through the USPTO is irregular, the IB will notify both the USPTO and the holder.  Common Reg. 26(1).  The holder must file a response to any notice of irregularity with the IB; the response cannot be filed through the USPTO.  37 C.F.R. §7.23(d). 

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration.  37 C.F.R. §7.22. 

The validity of a change in ownership with respect to a particular Contracting Party is governed by the law of that Contracting Party.  The office of a designated Contracting Party may declare that a change in ownership has no effect in its territory.  The declaration must be sent to the IB within 18 months of the date of IB's notification of the change.  Common Reg. 27(4).

2.    Restriction of Holder's Rights of Disposal

Under Common Reg. 20(1)(a), the holder of an international registration or the Contracting Party of the holder ( i.e. a Contracting Party in which the holder is a national, is domiciled, or has a real and effective business or commercial establishment) may inform the IB that the holder's right to dispose of the international registration has been restricted in whole or in part.  Under Common Reg. 20(1)(b), the Office of any designated Contracting Party may inform the IB that the holder's right of disposal has been restricted in the territory of that Contracting Party.  Examples of restrictions on the holder's right to dispose are security interests, and court orders concerning the disposal of the assets of the holder. 

The USPTO will accept for submission and forward to the IB a request to record a restriction of a holder's right to dispose of an international registration, or the release of such a restriction only if

(1) (i) the restriction is the result of a court order; or (ii) the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder's right of disposal, and the signature of the holder of the international registration cannot be obtained;

(2) the party who obtained the restriction is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States; and

(3) the restriction or release applies to the holder's right to dispose of the international registration in the United States. 

37 C.F.R. §7.23(a).

All other requests to record restrictions must be filed with the IB.  37 C.F.R. §§7.22 and 7.24(a). 

A request to record a restriction filed through the USPTO must include: 

  • The international registration number;
  • The name and address of the holder of the international registration;
  • The name and address of the party who obtained the restriction;
  • A statement that the party who submitted the request: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States. Where a party's address is not in the United States, the party must provide the address of its U.S. domicile or establishment;
  • A statement that (i) the restriction is the result of a court order, or (ii) where the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder's right of disposal, a statement that the signature of the holder of the international registration could not be obtained for the request to record the restriction or release of the restriction;
  • A summary of the main facts concerning the restriction;
  • An indication that the restriction, or the release of the restriction, of the holder's right of disposal of the international registration applies to the designation to the United States; and
  • The U.S. transmittal fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.24(b).

If the request meets the requirements of 37 C.F.R. §7.24(b), the USPTO will forward it to the IB.  37 C.F.R. §7.24(c).  If the request does not meet these requirements, the USPTO will refuse to forward the request to the IB, and will notify the holder of the reasons.  The USPTO will not refund the transmittal fee.  37 C.F.R. §7.24(d). 

If a request to record a restriction sent through the USPTO is irregular, the IB will notify both the USPTO and the holder.  Common Reg. 26(1).  The holder must file a response to any notice of irregularity with the IB; the response cannot be filed through the USPTO.  37 C.F.R. §7.24(e). 

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to restrictions of a holder's right to dispose of an international registration.  37 C.F.R. §7.22. 

3.    Change of the Holder's Name or Address

A request to record a change of the holder's name or address must be filed with the IB; it cannot be filed through the USPTO.  There is a form on the IB website at  http://www.wipo.int/madrid/en/ .  Article 9 bis; Common Reg. 25(2). 

4.    Change of Name or Address of Representative

A request to record a change of the representative's name or address must be filed with the IB; it cannot be filed through the USPTO.  There are forms on the IB website at  http://www.wipo.int/madrid/en/ .  See Common Reg. 36(i). 

The USPTO will accept a notice of change of the correspondence address in a §66(a) application or a registered extension of protection to the United States, and will send correspondence to the new address.  See section IV.B.6 above.  However, a change of the correspondence address in the USPTO will not change the representative designated in the international registration.

5.    Limitation, Renunciation, Cancellation of International Registration

Requests to record a limitation, renunciation or cancellation of an international registration must be filed with the IB; they cannot be filed through the USPTO.  There are forms on the IB website at  http://www.wipo.int/madrid/en/ .  Under Article 9 bis, the holder may record the following restrictions:

  • Limitation of the list of goods/services in some or all of the Contracting Parties (Common Reg. 25(1)(a)(ii))
  • Cancellation in respect to all Contracting Parties for some or all of the goods/services (Common Reg. 25(1)(a)(v))
  • Renunciation in respect to some but not all of the designated Contracting Parties with respect to all the goods/services (Common Reg. 25(1)(a)(iii))

The office of a designated Contracting Party may declare that a limitation has no effect in its territory, e.g. , because it considers that the change requested is an extension rather than a limitation.  The declaration must be sent to the IB within 18 months of the date of the IB's notification of the limitation.  Common Reg. 27(5).

6.    Correction of Errors in International Registration

The IB will correct errors in an international registration at the request of the holder or the Office of Origin.  Common Reg. 28(1).  Requests to correct errors in international registrations in which the USPTO was the Office of Origin must be filed directly with the IB.

The office of a designated Contracting Party may declare in a notification of provisional refusal that protection can no longer be granted to an international registration as corrected.  A new refusal period under Article 5 of the Protocol and Common Regs. 16-17 starts to run from the date of the correction, but only in respect to grounds that did not exist prior to the correction.  Common Reg. 28(3).

7.    Merger of International Registrations

Where the same party is the holder of two or more international registrations of the same mark due to a partial change in ownership, the party may request the IB to record a merger of the registrations.  Common Reg. 27(3).  The request must be filed with the IB; it cannot be filed through the USPTO.

8.    License

Under Common Reg. 20 bis (1), a holder may file a request to record a license, a request for amendment of the recording of a license, or a request for cancellation of the recording of a license.  Requests to record or cancel the recording of a license cannot be filed through the USPTO.  There are forms available on the IB website at  http://www.wipo.int/madrid/en/ .  A designated Contracting Party may declare that the recording of a license has no effect in its territory.  The declaration must be sent within 18 months of the IB's notification of recording of the license.  Common Reg. 20 bis (5). 

9.    No Other Changes Can Be Made

No other changes can be recorded in the International Register.  See the IB's Guide to International Registration, Para. B.II.69.01 (2002).

Mark in International Registration Cannot Be Changed .  There is no provision for a mark to be amended in any way, at any time, even if the mark in the basic application or basic registration changes.  Guide to International Registration, Para. B.II.69.02 (2002).   

Goods/Services in International Registration Cannot be Expanded .  It is not possible to expand the list of goods/services, even if the added goods/services were listed in the basic application or registration.  Guide to International Registration, Para. B.II.69.03 (2002).

B.   USPTO Will Receive Notices of Changes in International Registration

In a §66(a) application or registered extension of protection of an international registration to the United States, the IB will notify the USPTO of changes to the international registration, and the USPTO will make note of this in its automated records.  The USPTO may receive the following notices from the IB: 

  • Change of the holder's name or address
  • Change in Name or Address of Representative
  • Change in Ownership with respect to some or all of the goods/services (Common Reg. 25(1)(a)(i)) (See section IV.F above regarding assignment of an extension of protection to the United States.)
  • Limitation of the list of goods/services with respect to some or all Contracting Parties (Common Reg. 25(1)(a)(ii))
  • Cancellation with respect to all Contracting Parties for some or all of the goods/services (Common Reg. 25(1)(a)(v))
  • Renunciation of international registration with respect to some but not all Contracting Parties for all the goods/services (Common Reg. 25(1)(a)(iii))
  • Correction of Errors in international registration (Common Reg. 28(2))
  • Merger of International Registrations (Common Reg. 27(3))
  • Division or Merger of Basic Application or Registration on which international registration is based (Common Reg. 23)
  • License - recordation of license, amendment of the recording of a license, or request for cancellation of the recording of a license (Common Reg. 20bis)
  • Restriction of Holder's Right to Dispose of the international registration, or of the removal of such a restriction (Common Reg. 20)

 VII.  DIVISION OF REGISTRATIONS

Effective November 2, 2003, a registrant may file a request that a registration be divided into two or more separate registrations if ownership of the registration has changed with respect to some but not all of the goods and/or services.  37 C.F.R. §2.171(b).

The assignment must be recorded with the Assignment Services Division of the USPTO.  In the case of a registered extension of protection of an international registration to the United States, the change of ownership must be recorded with the IB before the change can be recorded in the Assignment Services Division of the USPTO.  37 C.F.R. §7.22.  See section VI.A.1 above.

A fee is required for each new registration created by the division.  37 C.F.R. §2.6(a)(8).

The USPTO will issue a new registration certificate and send updated registration certificates to the assignor and assignee. 

A registration may be divided more than once.

In a §66(a) registration, when the IB notifies the USPTO of the division of an international registration resulting from a partial change of ownership of the international registration with respect to some of the goods or services in the registered extension of protection to the United States, the USPTO will record the partial change of ownership, divide out the assigned goods or services from the registered extension of protection (parent registration), issue an updated certificate for the parent registration and publish notice of the parent registration in the Official Gazette.   The USPTO will not issue a new certificate for the child registration or publish notice of the child registration until the assignee files a request to divide under §2.171(b), and pays the required fee. 

Some contents linked to on this page require a plug-in for PDF files.

United States Patent and Trademark Office
This page is owned by Trademarks.
Last Modified: 9/28/2012 11:10:28 AM