1 00:00:10,880 --> 00:00:14,639 Hi everyone and welcome thank you for joining the 2 00:00:14,639 --> 00:00:18,720 uspto trademark webinar series on the madrid protocol 3 00:00:18,720 --> 00:00:23,279 today's topic is international trademark applications originating from the united 4 00:00:23,279 --> 00:00:26,560 states our speakers today are kelly choe and 5 00:00:26,560 --> 00:00:30,160 debbie lee kelly choe is an attorney advisor in the 6 00:00:30,160 --> 00:00:32,880 office of the deputy commissioner of trademark 7 00:00:32,880 --> 00:00:36,239 examination policy where she serves as one of the madrid 8 00:00:36,239 --> 00:00:39,360 protocol liaison attorneys on the petition side 9 00:00:39,360 --> 00:00:42,960 prior to joining the petition's office she worked in the office of trademark 10 00:00:42,960 --> 00:00:48,239 classification policy and practice as a senior attorney in law office 109 11 00:00:48,239 --> 00:00:52,480 and prior to that as a trademark examining attorney deputy lee has been 12 00:00:52,480 --> 00:00:56,879 an attorney advisor with the uspto for over 15 years 13 00:00:56,879 --> 00:01:00,079 she currently works in the office of the deputy commissioner for trademark 14 00:01:00,079 --> 00:01:02,960 examination policy where she serves as one of the 15 00:01:02,960 --> 00:01:06,640 madrid protocol liaison attorneys on the policy side 16 00:01:06,640 --> 00:01:10,400 prior to joining the trademark legal policy office she was an attorney 17 00:01:10,400 --> 00:01:13,760 advisor in the office of policy and international affairs 18 00:01:13,760 --> 00:01:17,680 where she provided advice regarding trademarks and geographical indications 19 00:01:17,680 --> 00:01:21,360 across a variety of regions prior to that she was a trademark 20 00:01:21,360 --> 00:01:25,920 examining attorney for seven years if you have questions during the webinar 21 00:01:25,920 --> 00:01:29,759 please post them in the chat window of this presentation and time permitting 22 00:01:29,759 --> 00:01:33,520 we will respond at the end of the presentation without further delay 23 00:01:33,520 --> 00:01:36,880 i will turn this over to kelly 24 00:01:37,600 --> 00:01:41,840 thanks katie and good afternoon everyone and thank you for registering and 25 00:01:41,840 --> 00:01:45,759 attending today's webinar i am kelly cho and i will start off 26 00:01:45,759 --> 00:01:49,280 today's presentation then pass off the more complicated 27 00:01:49,280 --> 00:01:53,280 aspects to my colleague debbie lee before we begin just want to let you 28 00:01:53,280 --> 00:01:57,520 know that we will be covering a lot of information in one and a half 29 00:01:57,520 --> 00:02:01,040 hours using madrid protocol specific terms 30 00:02:01,040 --> 00:02:04,079 and moving relatively quickly through the topics 31 00:02:04,079 --> 00:02:07,520 so if you find that you would like to learn more you can find additional 32 00:02:07,520 --> 00:02:10,399 information and resources about the major protocol 33 00:02:10,399 --> 00:02:14,560 on the uspto website and this presentation will also be made 34 00:02:14,560 --> 00:02:23,840 available on the website so let's begin next slide please 35 00:02:24,239 --> 00:02:28,400 so this is our road map for today's presentation we will start with a 36 00:02:28,400 --> 00:02:33,360 general overview of the madrid system then focus on the uspto as the office of 37 00:02:33,360 --> 00:02:36,160 origin for filing and certifying an international 38 00:02:36,160 --> 00:02:39,360 application and if the international application is 39 00:02:39,360 --> 00:02:43,760 denied certification by the uspto what your options are including filing a 40 00:02:43,760 --> 00:02:47,920 petition later we'll cover the notice of irregularity 41 00:02:47,920 --> 00:02:52,080 and also touch on post international registration issues 42 00:02:52,080 --> 00:02:54,720 next slide 43 00:02:57,519 --> 00:03:00,879 the madrid system what is it an international 44 00:03:00,879 --> 00:03:05,040 trademark filing system for registering and maintaining trademarks worldwide 45 00:03:05,040 --> 00:03:08,959 through a centralized mechanism underpinning the major system 46 00:03:08,959 --> 00:03:11,840 are two treaties the majority agreement concerning the 47 00:03:11,840 --> 00:03:15,599 international registration of marx and the protocol relating to the 48 00:03:15,599 --> 00:03:19,280 majority agreement concerning the international registration of marx 49 00:03:19,280 --> 00:03:22,480 the two trees are report referred to jointly as 50 00:03:22,480 --> 00:03:25,680 the major system and so you may hear these terms madrid 51 00:03:25,680 --> 00:03:28,879 protocol madrid system used interchangeably 52 00:03:28,879 --> 00:03:32,480 but note that the madrid protocol does refer to the treaty 53 00:03:32,480 --> 00:03:35,599 the major system is administered by the international bureau 54 00:03:35,599 --> 00:03:40,159 of the world intellectual property organization located in switzerland 55 00:03:40,159 --> 00:03:43,680 and in the interest of brevity i will probably just refer to the international 56 00:03:43,680 --> 00:03:46,560 bureau as the ib and the world intellectual 57 00:03:46,560 --> 00:03:51,519 property organization as wipo so why use it 58 00:03:51,519 --> 00:03:54,879 it is cost effective and efficient you file 59 00:03:54,879 --> 00:03:59,439 one application through one office using one language and pay 60 00:03:59,439 --> 00:04:03,120 one set of fees and with 106 current members 61 00:04:03,120 --> 00:04:08,799 you can seek protection in 122 countries and once your international registration 62 00:04:08,799 --> 00:04:11,840 issues management of your international registration 63 00:04:11,840 --> 00:04:14,640 portfolio is centralized through the international 64 00:04:14,640 --> 00:04:18,799 bureau next slide 65 00:04:20,639 --> 00:04:24,639 so this chart shows the filing process using the madrid system 66 00:04:24,639 --> 00:04:28,000 you would start with a national or regional trademark 67 00:04:28,000 --> 00:04:32,080 application or registration this is your basic application or 68 00:04:32,080 --> 00:04:37,600 basic registration and forms the basis of your international application in 69 00:04:37,600 --> 00:04:40,639 your international application you select or designate 70 00:04:40,639 --> 00:04:44,080 the countries you are seeking protection in and you again 71 00:04:44,080 --> 00:04:48,479 you have 122 countries to choose from and these designated countries 72 00:04:48,479 --> 00:04:52,960 are the contracting parties the international application is filed with 73 00:04:52,960 --> 00:04:55,919 your national or regional trademark office 74 00:04:55,919 --> 00:04:59,840 which is the office of origin so your office of origin will then 75 00:04:59,840 --> 00:05:04,080 review the international application and certify if all filing requirements 76 00:05:04,080 --> 00:05:06,560 are met then submit that international 77 00:05:06,560 --> 00:05:11,440 application to the international bureau upon receipt the international bureau 78 00:05:11,440 --> 00:05:14,800 will review the application for formalities only 79 00:05:14,800 --> 00:05:19,840 this is not a substantive examination once that review process is complete 80 00:05:19,840 --> 00:05:23,600 the ib will issue a registration certificate and this is your 81 00:05:23,600 --> 00:05:27,039 international registration then the international 82 00:05:27,039 --> 00:05:30,320 bureau will notify each of the contracting parties that you 83 00:05:30,320 --> 00:05:32,720 designated in your international application 84 00:05:32,720 --> 00:05:36,080 with a request for extension of protection 85 00:05:36,080 --> 00:05:40,160 this request for extension protection has the effect of a national or regional 86 00:05:40,160 --> 00:05:44,160 application filing in that designated country it is then up 87 00:05:44,160 --> 00:05:48,479 to each designated contracting party to review that request for extension of 88 00:05:48,479 --> 00:05:52,880 protection to determine scope and registrability under its own 89 00:05:52,880 --> 00:05:56,960 national laws so this means a refusal may issue but if 90 00:05:56,960 --> 00:06:01,520 no refusal is made generally a 12 or 18 month deadline 91 00:06:01,520 --> 00:06:05,120 the effect is a national or regional registration 92 00:06:05,120 --> 00:06:08,720 in that designated country 93 00:06:09,199 --> 00:06:11,840 next slide 94 00:06:15,600 --> 00:06:19,360 so this chart shows the filing process from a slightly different perspective 95 00:06:19,360 --> 00:06:23,120 the main point i want to make is that the madrid system 96 00:06:23,120 --> 00:06:26,880 is a filing mechanism only that the international bureau 97 00:06:26,880 --> 00:06:30,960 issues an international registration that notifies the designated contracting 98 00:06:30,960 --> 00:06:35,199 parties with a request for extension protection this does not automatically 99 00:06:35,199 --> 00:06:38,319 grant protection in those countries designated 100 00:06:38,319 --> 00:06:41,840 effectively you now have a or depending on how many 101 00:06:41,840 --> 00:06:46,080 countries you designated multiple pending national applications 102 00:06:46,080 --> 00:06:50,160 that you must then prosecute so the scope and for that matter the 103 00:06:50,160 --> 00:06:53,120 registrability of your request for extension protection 104 00:06:53,120 --> 00:06:56,639 will be determined under the relevant national laws of the designated 105 00:06:56,639 --> 00:06:59,360 contracting party and if you're successful in 106 00:06:59,360 --> 00:07:03,759 registering your mark in that country be aware that separate maintenance funds 107 00:07:03,759 --> 00:07:07,680 may be required to maintain your registered extension of protection 108 00:07:07,680 --> 00:07:10,319 so while the benefit of the madrid system enables you to 109 00:07:10,319 --> 00:07:13,520 centrally manage your international registrations through the international 110 00:07:13,520 --> 00:07:16,800 bureau including renewal just be aware that a 111 00:07:16,800 --> 00:07:20,800 single renewal filing at the iv may not be sufficient to maintain 112 00:07:20,800 --> 00:07:31,840 protection in the designated contracting party next slide 113 00:07:35,680 --> 00:07:39,759 sorry about that the next two slides cover 114 00:07:39,759 --> 00:07:44,479 noteworthy aspects of the madrid system an international application can be 115 00:07:44,479 --> 00:07:48,319 based on one or more applications android registrations for the same 116 00:07:48,319 --> 00:07:53,199 mark when filing through the uspto all fees are payable in a u.s dollar 117 00:07:53,199 --> 00:07:57,280 and the relevant fees include the basic fee which is payable to wipo 118 00:07:57,280 --> 00:08:04,000 and currently that's 653 swiss francs and 903 swiss francs for color marks 119 00:08:04,000 --> 00:08:07,520 there's also fees payable to the designated contracting parties 120 00:08:07,520 --> 00:08:11,199 which is generally per class of goods and services 121 00:08:11,199 --> 00:08:16,400 and also not listed on this slide are the uspto certification fees 122 00:08:16,400 --> 00:08:20,080 and as previously mentioned the relevant national laws of the designated 123 00:08:20,080 --> 00:08:23,919 contracting party will determine the scope of protection 124 00:08:23,919 --> 00:08:27,120 additionally the international registration is 125 00:08:27,120 --> 00:08:30,400 dependent on the scope of the basic application registration 126 00:08:30,400 --> 00:08:35,440 for five years if the basic application of registration is cancelled or limited 127 00:08:35,440 --> 00:08:40,159 so is the international registration and by extension the designations 128 00:08:40,159 --> 00:08:43,200 also once the international registration issues 129 00:08:43,200 --> 00:08:47,120 you can subsequently designate additional countries 130 00:08:47,120 --> 00:08:50,160 the dependency and subsequent designations will be covered again late 131 00:08:50,160 --> 00:08:55,839 in the presentation so i will move on to the next slide 132 00:09:00,320 --> 00:09:03,920 another nerd worthy item that we'll go into more detail later 133 00:09:03,920 --> 00:09:07,519 is that the scope of rights in the international registration 134 00:09:07,519 --> 00:09:11,920 may not exceed those in the basic application or registration to include 135 00:09:11,920 --> 00:09:15,360 the type representation and description of the mark 136 00:09:15,360 --> 00:09:19,440 identification of goods and services and color claims 137 00:09:19,440 --> 00:09:25,120 next slide and for these next slides debbie will be taking over 138 00:09:25,279 --> 00:09:29,120 thanks kelly um following up on what kelly was talking about 139 00:09:29,120 --> 00:09:34,240 one of the advantages of the system is that it is centrally administered 140 00:09:34,240 --> 00:09:40,320 at wipo and the main point on this slide is to explain 141 00:09:40,320 --> 00:09:45,760 how the operations business units of the ib are organized 142 00:09:45,760 --> 00:09:49,600 so they have four teams and there is one team that is assigned 143 00:09:49,600 --> 00:09:54,160 to handle the united states and what that means is that one team is 144 00:09:54,160 --> 00:09:57,920 processing our applications processing our correspondence 145 00:09:57,920 --> 00:10:02,320 also processing any maintenance filings that pertain to us 146 00:10:02,320 --> 00:10:06,320 and then they're also the team that will be handling the customer service 147 00:10:06,320 --> 00:10:11,279 um calls and requests that come in um from their online form 148 00:10:11,279 --> 00:10:14,720 so when you do reach out to the ib for help 149 00:10:14,720 --> 00:10:19,519 the people that will be working with you will be people that are familiar 150 00:10:19,519 --> 00:10:23,360 with the common issues that come up um relevant to 151 00:10:23,360 --> 00:10:27,440 our jurisdiction they can't answer legal questions but they are 152 00:10:27,440 --> 00:10:31,760 custom you know they have a they're familiar with the more common questions 153 00:10:31,760 --> 00:10:35,519 and they also have points of contact at the uspto in case 154 00:10:35,519 --> 00:10:40,320 they need to coordinate with us in order to resolve an issue 155 00:10:41,040 --> 00:10:44,880 this slide just provides an overview of some of the legal background 156 00:10:44,880 --> 00:10:50,560 for the us implementation we joined the madrid protocol and it was 157 00:10:50,560 --> 00:10:55,519 made effective in november of 2003 and we have up here 158 00:10:55,519 --> 00:10:59,200 references to the amendments of the trademark act 159 00:10:59,200 --> 00:11:02,880 that were enacted in order to have us join 160 00:11:02,880 --> 00:11:08,160 as well as changes to the uspto trademark rules of practice 161 00:11:08,160 --> 00:11:14,240 you can find the current version of both of these on the uspto website if 162 00:11:14,240 --> 00:11:17,279 you click on the trademark link and you go to the 163 00:11:17,279 --> 00:11:21,279 trademark home page there's a section in the right hand side 164 00:11:21,279 --> 00:11:25,279 that is called laws and rules and under that 165 00:11:25,279 --> 00:11:29,040 section you'll have access there's actually links to the most current 166 00:11:29,040 --> 00:11:31,920 version of the trademark act as well as the most current version of 167 00:11:31,920 --> 00:11:34,800 the rules of practice 168 00:11:35,200 --> 00:11:38,240 this slide i'm just going to skim over it's a little bit more 169 00:11:38,240 --> 00:11:43,440 information about our implementation that isn't it pertains to 170 00:11:43,440 --> 00:11:47,279 the inbound process and we're focusing in this presentation on the outbound but 171 00:11:47,279 --> 00:11:51,279 we have it here for your information 172 00:11:51,760 --> 00:11:55,360 as i sort of hinted in the last slide madrid is a two-way process so the 173 00:11:55,360 --> 00:11:59,920 subject matter of this presentation is the outgoing process that's the 174 00:11:59,920 --> 00:12:03,040 process of u.s applicants seeking protection in 175 00:12:03,040 --> 00:12:06,720 other countries for their trademarks using the madrid 176 00:12:06,720 --> 00:12:12,399 system and we have here references to the trademark manual of examining 177 00:12:12,399 --> 00:12:18,000 procedure that's the tmep that provide our policies and procedures 178 00:12:18,000 --> 00:12:21,200 as to that outgoing process but there is also 179 00:12:21,200 --> 00:12:25,920 an incoming process for requests for extension of protection 180 00:12:25,920 --> 00:12:29,279 which is just a fancy way of saying incoming 181 00:12:29,279 --> 00:12:33,519 applications through the madrid system into the united states so these are 182 00:12:33,519 --> 00:12:37,360 foreign applicants seeking protection via madrid in the 183 00:12:37,360 --> 00:12:41,839 united states where the uspto is a designated country 184 00:12:41,839 --> 00:12:46,720 and the treaty term is we are a designated contracting party 185 00:12:46,720 --> 00:12:50,880 beneath that we've got references to the relevant team ep sections that 186 00:12:50,880 --> 00:12:57,040 cover our policies and procedures for this half of our implementation 187 00:12:58,240 --> 00:13:02,320 we wanted to make you aware that we have a specialized business unit for 188 00:13:02,320 --> 00:13:07,360 handling madrid issues and it's called the madrid processing 189 00:13:07,360 --> 00:13:11,360 unit it's a small team relative to the amount of work that 190 00:13:11,360 --> 00:13:14,880 they do we have nine people one supervisor one administrative 191 00:13:14,880 --> 00:13:18,320 assistant one lead specialist and six specialists 192 00:13:18,320 --> 00:13:23,120 on the on the outbound side which is what we're talking about today 193 00:13:23,120 --> 00:13:27,920 the people in the mpu are responsible for review and certification of your 194 00:13:27,920 --> 00:13:33,200 international applications reviewing and forwarding to the ib your 195 00:13:33,200 --> 00:13:37,120 responses to notices of irregularity that you might receive 196 00:13:37,120 --> 00:13:40,720 as well as processing and sending to the ib 197 00:13:40,720 --> 00:13:45,600 ceasing of effect notices the mpu also does a tremendous amount of work 198 00:13:45,600 --> 00:13:52,160 on processing transactions that come in as part of the maintenance filings that 199 00:13:52,160 --> 00:13:56,240 happen so renewals and any changes to the identification of goods 200 00:13:56,240 --> 00:13:59,760 and services corrections those types of things as well but these are just the 201 00:13:59,760 --> 00:14:03,839 things that they do on the outbound side 202 00:14:04,079 --> 00:14:08,000 and the next couple of slides are just some information resources that we think 203 00:14:08,000 --> 00:14:12,480 might be helpful for you this is the uspto 204 00:14:12,480 --> 00:14:16,160 web page for the madrid protocol the link is over there on the right hand 205 00:14:16,160 --> 00:14:18,399 side it has a little bit of background 206 00:14:18,399 --> 00:14:21,440 information and mostly what we focused on 207 00:14:21,440 --> 00:14:26,079 in the content on this page is giving you information that will help you with 208 00:14:26,079 --> 00:14:30,000 the inbound and outbound process as to the united states 209 00:14:30,000 --> 00:14:33,680 so this is specialized information for us one 210 00:14:33,680 --> 00:14:38,399 item of note that is very popular on this page is we have a document 211 00:14:38,399 --> 00:14:42,480 entitled tips for avoiding denial of certification 212 00:14:42,480 --> 00:14:46,000 kelly is going to discuss that topic with you 213 00:14:46,000 --> 00:14:51,120 in actually in a few minutes but i wanted to let you know that it's 214 00:14:51,120 --> 00:14:57,199 available we have a document available online that covers that material as well 215 00:14:57,519 --> 00:15:02,959 and then i really wanted to show you this wipo website this is the madrid 216 00:15:02,959 --> 00:15:06,880 system home page for wipo and if you can bear with me i'm going to take you on a 217 00:15:06,880 --> 00:15:11,519 little brief adventure i'm going to show you 218 00:15:11,519 --> 00:15:15,120 just a little bit of the content here because the 219 00:15:15,120 --> 00:15:21,680 wipo website has a lot of really good user focused information 220 00:15:21,680 --> 00:15:24,880 about how the system is put together as a whole 221 00:15:24,880 --> 00:15:29,120 and i think this is a good resource for you at the top you can see 222 00:15:29,120 --> 00:15:32,800 everybody's preoccupation right now is with covid19 223 00:15:32,800 --> 00:15:38,320 they have information about filing flexibilities that are available 224 00:15:38,320 --> 00:15:42,320 during this time i'm going to skip past news and events 225 00:15:42,320 --> 00:15:47,600 although you'll see that they have video tutorials that they're advertising here 226 00:15:47,600 --> 00:15:50,800 they have a reference to their e-services 227 00:15:50,800 --> 00:15:57,440 including a search database that you can use to do a preliminary search 228 00:15:57,440 --> 00:16:00,480 of your mark so that's very helpful but also 229 00:16:00,480 --> 00:16:03,759 information pertaining to the entire process 230 00:16:03,759 --> 00:16:08,560 and then what i really want you to see if you scroll all the way down this page 231 00:16:08,560 --> 00:16:12,399 is information on how to contact customer service 232 00:16:12,399 --> 00:16:15,920 so they have a link to an electronic contact form 233 00:16:15,920 --> 00:16:20,079 they do respond you will be providing an email address for them to follow up they 234 00:16:20,079 --> 00:16:23,120 do actually follow up you can get help this 235 00:16:23,120 --> 00:16:26,000 way and then there's also the direct 236 00:16:26,000 --> 00:16:28,560 telephone number from madrid customer service 237 00:16:28,560 --> 00:16:33,199 and we have their operating hours here for you as well 238 00:16:34,880 --> 00:16:38,399 and i'm going to switch back here 239 00:16:43,759 --> 00:16:50,000 okay and now we're back to uspto land i'm going to just talk briefly about the 240 00:16:50,000 --> 00:16:53,920 filing options for your international application we do 241 00:16:53,920 --> 00:16:59,040 have electronic filing available you can only file in english and 242 00:16:59,040 --> 00:17:03,199 the certification fees this is the fee that we collect 243 00:17:03,199 --> 00:17:06,319 for reviewing your international application 244 00:17:06,319 --> 00:17:10,000 and then certifying it and sending it on to the international bureau it's a 245 00:17:10,000 --> 00:17:15,199 non-refundable fee it's 100 per class if you're filing 246 00:17:15,199 --> 00:17:20,000 based on one basic application or registration or a hundred and fifty 247 00:17:20,000 --> 00:17:23,679 dollars per class if your international application is 248 00:17:23,679 --> 00:17:28,640 based on more than one basic application or registration you can pay 249 00:17:28,640 --> 00:17:32,080 what we call the international fees which is the official wipo and country 250 00:17:32,080 --> 00:17:37,679 fees through us through the form when you file the form we will collect 251 00:17:37,679 --> 00:17:42,000 the fees in u.s dollars or you can tell the form that you're 252 00:17:42,000 --> 00:17:47,520 going to pay the fees directly to wipo via a wipo deposit account 253 00:17:47,520 --> 00:17:52,000 if you have one so you have those two options to pay 254 00:17:52,000 --> 00:17:56,480 also just so you're aware we send transactions and when i say 255 00:17:56,480 --> 00:18:01,760 transaction i mean any correspondence so international applications subsequent 256 00:18:01,760 --> 00:18:05,840 designations any other back and forth maintenance 257 00:18:05,840 --> 00:18:08,240 filings that we do with the international bureau 258 00:18:08,240 --> 00:18:12,840 those are sent every day in one single batch file so we don't send things 259 00:18:12,840 --> 00:18:18,320 individually we send the fees to the ib in one 260 00:18:18,320 --> 00:18:23,440 lump sum once a week and then also it's important to know 261 00:18:23,440 --> 00:18:27,600 that the ib sends money to us once a month 262 00:18:27,600 --> 00:18:32,720 so if you're in a situation where you have sent fees 263 00:18:32,720 --> 00:18:37,039 that have already gone to the inter seen me to the international bureau 264 00:18:37,039 --> 00:18:41,120 and you are waiting for a refund there is a bit of back and forth so it takes a 265 00:18:41,120 --> 00:18:45,280 little bit of time to work that out just be aware 266 00:18:45,679 --> 00:18:50,240 and continuing on to filing we accept two types of filings we will accept 267 00:18:50,240 --> 00:18:54,960 electronic filings and in limited circumstances we will 268 00:18:54,960 --> 00:18:59,919 accept paper filings for electronic filings we have two types 269 00:18:59,919 --> 00:19:04,080 of forms if you have only one basic application 270 00:19:04,080 --> 00:19:08,400 or registration that you're using for your international application 271 00:19:08,400 --> 00:19:12,960 you can use the pre-populated form the advantage of this form 272 00:19:12,960 --> 00:19:17,600 is that it will automatically pull the relevant information 273 00:19:17,600 --> 00:19:21,520 from your basic application or registration for you so you don't have 274 00:19:21,520 --> 00:19:26,480 to type it in if you don't make any changes to the 275 00:19:26,480 --> 00:19:30,799 information that was automatically populated into the form 276 00:19:30,799 --> 00:19:35,679 it will be automatically certified and sent to the international bureau 277 00:19:35,679 --> 00:19:40,080 if you make any tweaks to that information that will trigger a manual 278 00:19:40,080 --> 00:19:43,200 review a manual certification review process and that 279 00:19:43,200 --> 00:19:48,400 will just take a little bit longer if you have more than one basic 280 00:19:48,400 --> 00:19:52,160 application or registration that you're using for your international 281 00:19:52,160 --> 00:19:55,760 application you have to use the free text form 282 00:19:55,760 --> 00:19:59,840 and as the name suggests you're going to have to type in all the information 283 00:19:59,840 --> 00:20:03,919 into the form so that's the option that's the only option you have 284 00:20:03,919 --> 00:20:06,559 available if you have more than one basic 285 00:20:06,559 --> 00:20:11,200 application or registration and as i said before in limited 286 00:20:11,200 --> 00:20:14,400 circumstances we will accept paper filings 287 00:20:14,400 --> 00:20:19,039 as most of you are probably aware the uspto recently 288 00:20:19,039 --> 00:20:23,440 implemented implemented mandatory electronic filing 289 00:20:23,440 --> 00:20:27,360 so in the context of an international application 290 00:20:27,360 --> 00:20:31,440 we will accept paper if the applicant is claiming a treaty right 291 00:20:31,440 --> 00:20:37,200 to file on paper or if the electronic systems are not available when you 292 00:20:37,200 --> 00:20:42,000 need to file so in those circumstances we would accept a paper filing 293 00:20:42,000 --> 00:20:46,240 but be aware that the international bureau will only accept 294 00:20:46,240 --> 00:20:50,400 the paper filing on its official mm2 form 295 00:20:50,400 --> 00:20:54,799 so that form is available from the wipo website you can link to it 296 00:20:54,799 --> 00:20:59,360 from the website i showed you earlier and then i also have the direct link 297 00:20:59,360 --> 00:21:05,520 on a slide later on and now i'm going to switch back you're 298 00:21:05,520 --> 00:21:11,360 going to kelly's going to talk to you a little bit more about electronic filing 299 00:21:11,919 --> 00:21:16,559 thanks debbie okay so you're now ready to file 300 00:21:16,559 --> 00:21:20,000 an international application through the uspto website 301 00:21:20,000 --> 00:21:23,440 there are probably slightly different ways to get there but ultimately you 302 00:21:23,440 --> 00:21:28,640 want to find the madrid protocol forms link click on the application for 303 00:21:28,640 --> 00:21:32,960 international registration and this page will display showing both 304 00:21:32,960 --> 00:21:37,679 the pre-populated form and the free text form 305 00:21:37,679 --> 00:21:42,159 as debbie indicated earlier you will not be able to use the pre-populated form if 306 00:21:42,159 --> 00:21:45,840 you have multiple u.s applications or registrations you 307 00:21:45,840 --> 00:21:48,480 would only be able to use the free text form 308 00:21:48,480 --> 00:21:52,559 so what are the advantages of the pre-populated form 309 00:21:52,559 --> 00:21:56,480 as the name suggests this form pre-populates with the exact information 310 00:21:56,480 --> 00:22:01,200 from the uspto database so transcription mistakes are unlikely and 311 00:22:01,200 --> 00:22:05,039 as mentioned earlier if no changes are made the international 312 00:22:05,039 --> 00:22:07,840 application is automatically certified and 313 00:22:07,840 --> 00:22:16,159 transmitted to the international bureau next slide 314 00:22:17,280 --> 00:22:20,640 so i think i covered this slide so we'll just move on to 315 00:22:20,640 --> 00:22:23,360 the next slide 316 00:22:23,840 --> 00:22:27,280 so what are the disadvantages of using the pre-populated form 317 00:22:27,280 --> 00:22:32,480 most notably pre-population of data containing errors or incorrect 318 00:22:32,480 --> 00:22:36,480 information for example if there is a typo or error 319 00:22:36,480 --> 00:22:39,520 in the u.s application or registration this error 320 00:22:39,520 --> 00:22:42,480 will also appear in the international application and 321 00:22:42,480 --> 00:22:45,280 ultimately the international registration 322 00:22:45,280 --> 00:22:50,080 errors might include typos incorrect punctuations in the owner name 323 00:22:50,080 --> 00:22:54,159 or listing of the goods and services or an incorrect indication 324 00:22:54,159 --> 00:22:58,640 of the mark type because international applications cannot be corrected or 325 00:22:58,640 --> 00:23:01,120 amended this may result in a denial of 326 00:23:01,120 --> 00:23:05,120 certification or ultimately affect protection in the designated 327 00:23:05,120 --> 00:23:09,120 contracting parties so if there are any errors or incorrect 328 00:23:09,120 --> 00:23:11,760 information in the us application or registration 329 00:23:11,760 --> 00:23:15,440 you should correct that prior to filing the international 330 00:23:15,440 --> 00:23:19,039 application if time permits or consider using the 331 00:23:19,039 --> 00:23:24,080 free text form slide 332 00:23:26,159 --> 00:23:29,360 so the madrid processing unit or mpu processes 333 00:23:29,360 --> 00:23:34,159 all the international applications for the uspto as the office of origin 334 00:23:34,159 --> 00:23:38,240 mpu reviews each international application and compares information 335 00:23:38,240 --> 00:23:41,279 with each basic application or registration 336 00:23:41,279 --> 00:23:45,200 to determine if all the filing requirements are met and will either 337 00:23:45,200 --> 00:23:49,760 certify and forward the international application to the international bureau 338 00:23:49,760 --> 00:23:54,320 or deny certification and send the applicant a letter setting forth the 339 00:23:54,320 --> 00:23:57,840 reasons for the denial if denied certification the 340 00:23:57,840 --> 00:24:00,320 international filing fees will be refunded 341 00:24:00,320 --> 00:24:04,400 but the uspto certification fees will not 342 00:24:04,400 --> 00:24:06,960 next slide 343 00:24:09,440 --> 00:24:12,799 so the next few slides highlight some of the key elements 344 00:24:12,799 --> 00:24:16,960 and pu reviews for certification and if there are discrepancies 345 00:24:16,960 --> 00:24:20,159 a denial of certification will likely issue 346 00:24:20,159 --> 00:24:24,320 the first is ownership here we're looking at the owner name 347 00:24:24,320 --> 00:24:27,760 entity designation and citizenship they must be 348 00:24:27,760 --> 00:24:31,440 identical for example if the owner name the basic application 349 00:24:31,440 --> 00:24:35,360 includes inc the owner name in the international application must 350 00:24:35,360 --> 00:24:40,080 also include inc reproduction and description of the mark this 351 00:24:40,080 --> 00:24:44,559 includes color claimed as well they must be the same for example if the 352 00:24:44,559 --> 00:24:48,400 basic application or registration includes a marked description 353 00:24:48,400 --> 00:24:51,760 then the same marked description must be included in an international 354 00:24:51,760 --> 00:24:55,919 application if the mark in the basic application is in color 355 00:24:55,919 --> 00:24:59,120 then the mark in the international application must also 356 00:24:59,120 --> 00:25:04,320 be in color standard character claims these claims must be present in all the 357 00:25:04,320 --> 00:25:08,159 basic applications or registrations that from the basis of the international 358 00:25:08,159 --> 00:25:15,840 application next slide 359 00:25:18,159 --> 00:25:21,360 also the international application must include an 360 00:25:21,360 --> 00:25:25,440 indication for certain types of marks specifically if the basic 361 00:25:25,440 --> 00:25:28,640 application or registration is a three-dimensional mark 362 00:25:28,640 --> 00:25:31,760 sound mark collective or certification mark 363 00:25:31,760 --> 00:25:35,840 so please be sure of what you're filing and what you are starting 364 00:25:35,840 --> 00:25:39,919 in your international application before filing 365 00:25:39,919 --> 00:25:43,840 next slide 366 00:25:45,039 --> 00:25:48,480 the goods and services are also reviewed for certification 367 00:25:48,480 --> 00:25:51,360 essentially the listing of the goods and services in the international 368 00:25:51,360 --> 00:25:55,200 application must be the same as or less than the 369 00:25:55,200 --> 00:25:59,919 goods and services and the basic application or registration but be aware 370 00:25:59,919 --> 00:26:02,080 that the goods and services listed in the 371 00:26:02,080 --> 00:26:05,520 international application must be within scope of the basic 372 00:26:05,520 --> 00:26:11,039 applications and registrations when mpu actually reviews the international 373 00:26:11,039 --> 00:26:15,840 application for certification so if the identification of goods and 374 00:26:15,840 --> 00:26:20,960 services in the basic application was amended before mpu reviewed the 375 00:26:20,960 --> 00:26:24,559 international application depending on the nature of the 376 00:26:24,559 --> 00:26:28,400 amendments a denial of certification may issue if the goods are no longer 377 00:26:28,400 --> 00:26:31,919 within scope in the international application 378 00:26:31,919 --> 00:26:36,480 as for limitations this refers to limiting or narrowing 379 00:26:36,480 --> 00:26:39,679 the listing of goods and services specific to 380 00:26:39,679 --> 00:26:44,720 each designated contracting party note however that the uspto 381 00:26:44,720 --> 00:26:48,000 does not review limitations for certification 382 00:26:48,000 --> 00:26:53,840 purposes next slide 383 00:26:55,360 --> 00:26:58,960 and though the identification of goods and services is reviewed for 384 00:26:58,960 --> 00:27:03,360 certification mpu does not certify classification of 385 00:27:03,360 --> 00:27:07,760 those goods and services to listing in the international application 386 00:27:07,760 --> 00:27:11,840 classification is solely determined by the international bureau 387 00:27:11,840 --> 00:27:16,400 pursuant to the nice classification in effect as of the filing date of the 388 00:27:16,400 --> 00:27:20,240 international application currently it is the niece classification 389 00:27:20,240 --> 00:27:24,399 11th edition version 2020. so while the listing of goods and 390 00:27:24,399 --> 00:27:26,799 services in the international application 391 00:27:26,799 --> 00:27:30,880 does not have to be classified in the same class as in the basic application 392 00:27:30,880 --> 00:27:34,399 or registration be aware that improperly classified 393 00:27:34,399 --> 00:27:37,840 goods or services will likely result in the issuance of a 394 00:27:37,840 --> 00:27:41,760 notice of irregularity from the ib 395 00:27:42,320 --> 00:27:44,880 next slide 396 00:27:46,960 --> 00:27:50,480 the international registration date the international registration date 397 00:27:50,480 --> 00:27:55,360 is the date the international application is received by the uspto 398 00:27:55,360 --> 00:28:00,080 provided that the international bureau receives that international application 399 00:28:00,080 --> 00:28:03,360 from the uspto within two months of receipt 400 00:28:03,360 --> 00:28:08,640 by the uspto this is true even with applications with the claim priority 401 00:28:08,640 --> 00:28:12,240 so for international applications that include that claim of priority 402 00:28:12,240 --> 00:28:17,120 so long as the international application is filed with the uspto 403 00:28:17,120 --> 00:28:21,279 on or before the last day of the six-month priority period 404 00:28:21,279 --> 00:28:28,480 the uspto has two months to get that application to the ib if however the 405 00:28:28,480 --> 00:28:31,200 international application is received by the ib 406 00:28:31,200 --> 00:28:35,679 after that two-month window the international registration date will be 407 00:28:35,679 --> 00:28:40,000 the date a receipt by the ib basically the date when the ib receives 408 00:28:40,000 --> 00:28:47,279 the international application from us next page 409 00:28:48,399 --> 00:28:53,279 how to avoid a denial of certification 410 00:28:54,320 --> 00:28:56,799 next page 411 00:28:57,440 --> 00:29:01,279 so these are some general practice tips to consider before filing an 412 00:29:01,279 --> 00:29:05,039 international application review and correct any errors or 413 00:29:05,039 --> 00:29:09,360 inconsistencies before filing the international application and when 414 00:29:09,360 --> 00:29:13,520 reviewing information in the uspto database please use tsdr 415 00:29:13,520 --> 00:29:16,880 or the trademark status and document retrieval system 416 00:29:16,880 --> 00:29:20,720 rather than test the trademark electronic service system 417 00:29:20,720 --> 00:29:24,840 because of the way tests display certain fields we suggest that you rely on the 418 00:29:24,840 --> 00:29:30,240 information that is displayed in tsdr 419 00:29:31,679 --> 00:29:34,320 next page 420 00:29:37,039 --> 00:29:40,080 so how to correct errors or inconsistencies 421 00:29:40,080 --> 00:29:44,480 before filing so if you note that there is an error or inconsistency 422 00:29:44,480 --> 00:29:49,200 in the basic application you can contact the assigned examining attorney to 423 00:29:49,200 --> 00:29:53,679 request an amendment or the correction if an examining attorney has not yet 424 00:29:53,679 --> 00:29:57,679 been signed you can file a voluntary amendment 425 00:29:57,679 --> 00:30:01,440 if the error or inconsistency is in the basic registration 426 00:30:01,440 --> 00:30:05,679 you can file a section 7 amendment with the post registration unit 427 00:30:05,679 --> 00:30:10,320 or if appropriate file an assignment with the assignment recordation branch 428 00:30:10,320 --> 00:30:14,559 however again be mindful of timing when filing the assignment 429 00:30:14,559 --> 00:30:19,039 uspto records may not have yet updated to reflect the assignment 430 00:30:19,039 --> 00:30:23,520 so depending on when the international application was filed 431 00:30:23,520 --> 00:30:26,720 when mpu actually reviews the international 432 00:30:26,720 --> 00:30:31,600 application the owner name may be inconsistent 433 00:30:31,600 --> 00:30:35,679 and that would warrant a denial of certification so it would be optimal to 434 00:30:35,679 --> 00:30:38,320 wait until the assignment has been recorded 435 00:30:38,320 --> 00:30:42,640 and the uspto database has updated to the correct owner name 436 00:30:42,640 --> 00:30:47,279 before filing the international application 437 00:30:48,799 --> 00:30:53,919 next page um since we've covered most of this information 438 00:30:53,919 --> 00:30:58,799 we will just move on to the next slide 439 00:30:59,840 --> 00:31:02,960 denial of certification as discussed earlier 440 00:31:02,960 --> 00:31:06,799 mpu will review the international application to determine if it meets 441 00:31:06,799 --> 00:31:11,600 certain filing requirements if mpu deny certification a letter is 442 00:31:11,600 --> 00:31:16,080 issued explaining the reasons for the dial this is a final 443 00:31:16,080 --> 00:31:18,880 decision and does not permit the applicant to 444 00:31:18,880 --> 00:31:22,559 file a response or otherwise amend the international 445 00:31:22,559 --> 00:31:25,679 application however the letter will outline the 446 00:31:25,679 --> 00:31:30,399 applicant's options which are to file a new international 447 00:31:30,399 --> 00:31:34,159 application basically to start over or to file a 448 00:31:34,159 --> 00:31:36,640 petition to the director to review denial 449 00:31:36,640 --> 00:31:39,440 of certification 450 00:31:40,320 --> 00:31:42,960 next page 451 00:31:44,720 --> 00:31:49,039 so the petition to review denial of certification is an online form that is 452 00:31:49,039 --> 00:31:53,840 available through the uspto website this petition is a request to the 453 00:31:53,840 --> 00:31:58,640 director of the uspto to review mpu's decision or exercise 454 00:31:58,640 --> 00:32:02,240 supervise three i'm sorry to exercise authority to 455 00:32:02,240 --> 00:32:05,279 permit applicant to correct minor mistakes in the 456 00:32:05,279 --> 00:32:09,360 international application sometimes the issues can be a little uh 457 00:32:09,360 --> 00:32:11,919 convoluted so if there are any questions we do 458 00:32:11,919 --> 00:32:16,480 encourage applicants to contact us before filing the international 459 00:32:16,480 --> 00:32:22,320 application or the petition next page 460 00:32:24,320 --> 00:32:28,159 some things to consider when filing a petition 461 00:32:28,159 --> 00:32:32,240 timeliness please be aware of that two-month window 462 00:32:32,240 --> 00:32:36,399 the the international application must be certified by the uspto 463 00:32:36,399 --> 00:32:40,159 and received by the international bureau within two months 464 00:32:40,159 --> 00:32:43,519 a receipt at the uspto in order to preserve 465 00:32:43,519 --> 00:32:47,360 that filing date as the international registration date 466 00:32:47,360 --> 00:32:51,200 and if the submitted international application contains errors 467 00:32:51,200 --> 00:32:55,760 together with the petition a substitute paper international application which is 468 00:32:55,760 --> 00:33:00,159 the mm2 that debbie talked about earlier that's also got to be submitted this 469 00:33:00,159 --> 00:33:05,120 form can be downloaded from wipo's website so while the originally 470 00:33:05,120 --> 00:33:08,799 filed international application cannot be corrected or amended 471 00:33:08,799 --> 00:33:12,320 a substitute application the mm2 once it is reviewed 472 00:33:12,320 --> 00:33:17,840 and determined to be acceptable can be certified and sent to the ib 473 00:33:17,840 --> 00:33:21,600 and again because of this two month window these petitions 474 00:33:21,600 --> 00:33:25,200 are expedited for review by a petition staff attorney 475 00:33:25,200 --> 00:33:28,799 so be sure you're filing the correct petition form 476 00:33:28,799 --> 00:33:33,440 and to file as soon as practicable 477 00:33:35,519 --> 00:33:39,840 next slide 478 00:33:40,159 --> 00:33:44,080 this slide covers a couple of other considerations that we're not going to 479 00:33:44,080 --> 00:33:46,880 spend too much time on just wanted to mention 480 00:33:46,880 --> 00:33:49,600 that international applications can be based on 481 00:33:49,600 --> 00:33:53,919 u.s applications pending or registrations issued by the uspto 482 00:33:53,919 --> 00:33:59,360 on the supplemental register and the next slide will be back to 483 00:33:59,360 --> 00:34:01,679 debbie 484 00:34:03,440 --> 00:34:10,159 thanks kelly um so kelly touched on subsequent designations at the very 485 00:34:10,159 --> 00:34:13,760 beginning but just to kind of recap because we're throwing a lot of new 486 00:34:13,760 --> 00:34:17,440 terminology at you the subsequent designation 487 00:34:17,440 --> 00:34:21,359 is a request you file to seek protection in additional 488 00:34:21,359 --> 00:34:25,200 countries that you did not include in the international 489 00:34:25,200 --> 00:34:29,839 application when you filed it or to seek protection for additional goods and 490 00:34:29,839 --> 00:34:35,679 services that weren't covered in a previous designation to a country 491 00:34:35,679 --> 00:34:41,359 so the the core thing to keep in mind throughout this process is that the 492 00:34:41,359 --> 00:34:45,440 international registration sits in the middle of all of this so you can't 493 00:34:45,440 --> 00:34:50,079 add goods or services that are not covered by the international 494 00:34:50,079 --> 00:34:53,599 registration so you're always going to be limited to what's in the 495 00:34:53,599 --> 00:34:56,639 international registration but but that's the function of the 496 00:34:56,639 --> 00:35:00,400 subsequent designation it can only be filed once the 497 00:35:00,400 --> 00:35:04,079 international registration issues so you're going to need that 498 00:35:04,079 --> 00:35:09,280 number when you file it you can file it with us using a teas i 499 00:35:09,280 --> 00:35:13,760 form or you can file it directly with the ib 500 00:35:13,760 --> 00:35:18,000 they have an electronic a fully electronic mm4 form 501 00:35:18,000 --> 00:35:23,839 for that purpose if you file directly with the ib the form will be processed 502 00:35:23,839 --> 00:35:27,440 more quickly because you're eliminating the uspto as the middleman 503 00:35:27,440 --> 00:35:33,440 so that's an advantage if you file with us we charge a one hundred dollar 504 00:35:33,440 --> 00:35:37,839 non-refundable transmittal fee but the advantage is that you pay in us 505 00:35:37,839 --> 00:35:41,760 dollars instead of swiss francs you should know that we 506 00:35:41,760 --> 00:35:44,800 don't review subsequent designations for any 507 00:35:44,800 --> 00:35:49,280 requirements we are simply forwarding on to the international 508 00:35:49,280 --> 00:35:53,280 bureau whatever you file with us so that is our function so if you file 509 00:35:53,280 --> 00:35:57,119 directly with the ib you can skip the 100 fee but then you'll 510 00:35:57,119 --> 00:35:59,359 be paying in swiss francs that's kind of the 511 00:35:59,359 --> 00:36:03,920 nuts and bolts of that you want to be mindful of the renewal date of the 512 00:36:03,920 --> 00:36:07,280 international registration again the international registration 513 00:36:07,280 --> 00:36:09,839 sits in the middle of this entire process 514 00:36:09,839 --> 00:36:13,280 so when the international registration expires 515 00:36:13,280 --> 00:36:18,240 all of the designations expire so everything is linked all of the 516 00:36:18,240 --> 00:36:22,640 country designations all of your baby trademark applications and registrations 517 00:36:22,640 --> 00:36:27,520 that emanated from that international registration will expire when the ir 518 00:36:27,520 --> 00:36:32,400 spire expires so just keep in mind your renewal date 519 00:36:32,400 --> 00:36:36,240 when you file a subsequent designation your default filing date 520 00:36:36,240 --> 00:36:39,760 is the date received at the uspto if the ib 521 00:36:39,760 --> 00:36:44,079 receives it within two months of that date otherwise it's the date received at 522 00:36:44,079 --> 00:36:47,440 the ib obviously if you file at the ib it's 523 00:36:47,440 --> 00:36:50,320 going to be the date it was received at the ib 524 00:36:50,320 --> 00:36:56,079 however on the form you can indicate and this is off the uspto form 525 00:36:56,079 --> 00:37:00,880 as well as the ib form you can indicate that you want the subsequent designation 526 00:37:00,880 --> 00:37:04,720 to take effect after the renewal of the international 527 00:37:04,720 --> 00:37:08,640 registration or after some change to the 528 00:37:08,640 --> 00:37:11,599 international registration has taken effect 529 00:37:11,599 --> 00:37:15,440 so you do have those options when you file the form their check boxes 530 00:37:15,440 --> 00:37:18,640 basically and then also we have a point on the 531 00:37:18,640 --> 00:37:23,760 slide that there are some parties that you can designate only if your 532 00:37:23,760 --> 00:37:28,160 international registration date is after the date they joined the madrid 533 00:37:28,160 --> 00:37:32,079 protocol that is an option when countries join the protocol 534 00:37:32,079 --> 00:37:36,640 currently there are only the five countries listed that have 535 00:37:36,640 --> 00:37:41,359 opted in this way but if you file using one of our forms 536 00:37:41,359 --> 00:37:45,680 and you designate a country one of or you try to designate one of these 537 00:37:45,680 --> 00:37:50,480 countries and your international registration date precedes 538 00:37:50,480 --> 00:37:56,480 their assession date that option will be grayed out the form won't let you do it 539 00:37:57,040 --> 00:38:05,839 and now i'm going to let kelly talk about notices of irregularity 540 00:38:06,160 --> 00:38:12,480 thank you so now we're on notices of irregularity so 541 00:38:12,480 --> 00:38:16,720 what is that a notice of irregularity is a notice from the international bureau 542 00:38:16,720 --> 00:38:20,160 concerning deficiencies in the international application that will 543 00:38:20,160 --> 00:38:24,720 require correction from the applicant or the uspto so when the 544 00:38:24,720 --> 00:38:28,640 international bureau receives the certified international application 545 00:38:28,640 --> 00:38:32,480 from the uspto it will be reviewed for formalities not 546 00:38:32,480 --> 00:38:36,560 for substantive issues and as a result of that review um may 547 00:38:36,560 --> 00:38:39,680 issue a notice of irregularity for deficiencies 548 00:38:39,680 --> 00:38:43,280 including the identification or classification 549 00:38:43,280 --> 00:38:50,640 of goods and services or fees next slide 550 00:38:55,359 --> 00:38:58,640 so how to respond to a notice of irregularity 551 00:38:58,640 --> 00:39:02,720 depending on the type of deficiency irregularity it may be remedied 552 00:39:02,720 --> 00:39:06,960 by the uspto for example a drawing was omitted from the 553 00:39:06,960 --> 00:39:10,480 international application or by the applicant directly 554 00:39:10,480 --> 00:39:17,839 with the ib for perhaps missing fees or by the applicant through the uspto 555 00:39:17,839 --> 00:39:21,920 where the uspto will review the response and forward 556 00:39:21,920 --> 00:39:26,560 to the ib and this is when the irregularity concerns 557 00:39:26,560 --> 00:39:32,320 the identification of goods and services for if you wanted additional information 558 00:39:32,320 --> 00:39:34,400 on the identification or classification of 559 00:39:34,400 --> 00:39:38,480 goods and services you can see rules 12 and 13 of the regulations under the 560 00:39:38,480 --> 00:39:43,839 protocol uh next slide 561 00:39:46,320 --> 00:39:50,400 so the deadline for responding to a notice of irregularity is generally 562 00:39:50,400 --> 00:39:52,960 three months and the due date will be clearly 563 00:39:52,960 --> 00:39:57,680 indicated on the notice that you receive if the response has to be filed through 564 00:39:57,680 --> 00:40:01,680 the uspto we do encourage you to file that 565 00:40:01,680 --> 00:40:05,920 response early so that mpu has sufficient time to review 566 00:40:05,920 --> 00:40:10,000 and forward to the international bureau if your response 567 00:40:10,000 --> 00:40:14,079 is received by the uspto after the response deadline 568 00:40:14,079 --> 00:40:19,920 mpu will not process it and it will not be forwarded to the ib 569 00:40:22,720 --> 00:40:27,520 next slide um so this is the response to notice of irregularity 570 00:40:27,520 --> 00:40:33,040 form that's available online on the uspto website 571 00:40:34,160 --> 00:40:37,119 and that's obviously the form that you would use to uh submit that response if 572 00:40:37,119 --> 00:40:40,640 it's got to be through the uspto 573 00:40:42,160 --> 00:40:44,640 next slide 574 00:40:47,119 --> 00:40:51,599 once the response to the notice of irregularity form has been submitted 575 00:40:51,599 --> 00:40:55,200 it will route to mpu an mpu specialist will 576 00:40:55,200 --> 00:40:58,560 review the amended goods and services in the response 577 00:40:58,560 --> 00:41:01,920 if the amended goods and services and the response exceed the scope 578 00:41:01,920 --> 00:41:06,800 of the goods and services listed in the basic application registration 579 00:41:06,800 --> 00:41:10,240 npu will not forward that response to the ib 580 00:41:10,240 --> 00:41:13,359 and will notify the applicant accordingly 581 00:41:13,359 --> 00:41:16,880 if the international bureau's deadline has not yet expired 582 00:41:16,880 --> 00:41:21,040 then the applicant can submit a new response and if that new response is 583 00:41:21,040 --> 00:41:24,880 acceptable mpu will forward that to the ib so 584 00:41:24,880 --> 00:41:28,640 filing response early provides this additional time 585 00:41:28,640 --> 00:41:32,400 to allow for a potential second response to be filed 586 00:41:32,400 --> 00:41:35,839 for submission to the ib 587 00:41:38,400 --> 00:41:40,960 next slide 588 00:41:42,079 --> 00:41:46,160 so what happens if a response to the notice of irregularity is not timely 589 00:41:46,160 --> 00:41:50,319 submitted to the international bureau if an irregularity concerning 590 00:41:50,319 --> 00:41:53,760 unacceptable wording or terms and the listing of the goods and services 591 00:41:53,760 --> 00:41:59,680 is not remedied the ib may include the unacceptable wording or terms in the 592 00:41:59,680 --> 00:42:03,440 international registration with bracketed indication that the ib 593 00:42:03,440 --> 00:42:08,560 considers such wording terms to be too vague for purposes of classification 594 00:42:08,560 --> 00:42:12,480 and that's if classification was provided in the application 595 00:42:12,480 --> 00:42:16,079 if we if the if classification was not provided 596 00:42:16,079 --> 00:42:22,400 then the unacceptable wording would be deleted and the uspton the 597 00:42:22,400 --> 00:42:27,680 applicant would be notified of such but again if the irregularity concerns 598 00:42:27,680 --> 00:42:31,839 fees and no response with tommy filed 599 00:42:31,839 --> 00:42:37,200 the ib will likely abandon the international application 600 00:42:37,200 --> 00:42:40,880 next slide and back to you debbie 601 00:42:41,119 --> 00:42:45,839 thank you okay so um for this is the last section of the 602 00:42:45,839 --> 00:42:49,119 presentation and i'm going to talk to you about what happens 603 00:42:49,119 --> 00:42:52,560 after the international registration issues 604 00:42:52,560 --> 00:42:55,760 so we're going to spend a little bit of time talking about dependency and 605 00:42:55,760 --> 00:42:59,680 seasons of effect and then some information on maintaining 606 00:42:59,680 --> 00:43:04,400 your international registration and making changes to it 607 00:43:04,640 --> 00:43:09,200 okay dependency this is important it's one of the core principles of the madrid 608 00:43:09,200 --> 00:43:12,960 system as we've been discussing all along your 609 00:43:12,960 --> 00:43:16,160 application for the international registration must be 610 00:43:16,160 --> 00:43:19,839 based on one or more us trademark applications or 611 00:43:19,839 --> 00:43:23,200 registrations those are your basics your basic application your basic 612 00:43:23,200 --> 00:43:26,560 registration the rest of the story is that the 613 00:43:26,560 --> 00:43:31,040 international registration continues to be tied to your basic application or 614 00:43:31,040 --> 00:43:35,440 registration for a period of five years from the date the 615 00:43:35,440 --> 00:43:39,280 international registration issues so five years from the registration date 616 00:43:39,280 --> 00:43:42,880 of the ir this means that if the basic application 617 00:43:42,880 --> 00:43:46,240 or registration dies within that five-year dependency 618 00:43:46,240 --> 00:43:51,280 period the international registration dies or if the listing of 619 00:43:51,280 --> 00:43:54,720 goods and services in the basic application or registration is 620 00:43:54,720 --> 00:43:58,000 restricted within that five-year dependency period 621 00:43:58,000 --> 00:44:01,680 that restriction is going to be translated into the listing of goods and 622 00:44:01,680 --> 00:44:04,800 services in the international registration 623 00:44:04,800 --> 00:44:08,800 so what happens in the basic is going to get translated 624 00:44:08,800 --> 00:44:14,000 into your international registration during that five-year dependency period 625 00:44:14,000 --> 00:44:19,280 just keep that in mind um we notify the international bureau 626 00:44:19,280 --> 00:44:23,920 of these changes via a notice called a ceasing of effect 627 00:44:23,920 --> 00:44:27,520 and then the other important concept and i talked about this a little bit when i 628 00:44:27,520 --> 00:44:30,640 was talking about subsequent designations 629 00:44:30,640 --> 00:44:35,040 is that dependency works in concert with this with this feature of the system 630 00:44:35,040 --> 00:44:38,480 that all the designations are tied to the international 631 00:44:38,480 --> 00:44:41,839 registration so what happens to the international 632 00:44:41,839 --> 00:44:45,040 registration is going to happen to all of the 633 00:44:45,040 --> 00:44:48,160 designations all of the baby trademark applications 634 00:44:48,160 --> 00:44:54,720 and registrations that emanated from the international registration so 635 00:44:54,720 --> 00:45:01,280 if the basic application or registration is abandoned or if it's cancelled your 636 00:45:01,280 --> 00:45:05,760 international registration is going to be cancelled and then all of 637 00:45:05,760 --> 00:45:08,079 your designations are going to be cancelled 638 00:45:08,079 --> 00:45:12,800 as well this is how dependency works same thing for restrictions of goods and 639 00:45:12,800 --> 00:45:16,240 services if your good listing of goods and 640 00:45:16,240 --> 00:45:18,400 services and your basic application or 641 00:45:18,400 --> 00:45:22,640 registration is restricted that is going to be reflected in the 642 00:45:22,640 --> 00:45:25,599 international registration it will be narrowed 643 00:45:25,599 --> 00:45:29,119 accordingly and then that same restriction of goods 644 00:45:29,119 --> 00:45:33,200 and services is going to be translated into all of 645 00:45:33,200 --> 00:45:36,480 the designations so all of your designations will be restricted 646 00:45:36,480 --> 00:45:39,119 accordingly 647 00:45:41,359 --> 00:45:44,640 and i think that is what i want to talk about 648 00:45:44,640 --> 00:45:47,920 oh no i did want to say one more point when the five-year 649 00:45:47,920 --> 00:45:53,359 dependency period ends then the international registration is free 650 00:45:53,359 --> 00:45:57,200 of the basics so you don't have to worry about it after that five-year period 651 00:45:57,200 --> 00:46:03,359 it's automatic i'm going to skip this i've i've talked 652 00:46:03,359 --> 00:46:07,280 about this i just did it all on the first slide 653 00:46:07,280 --> 00:46:11,520 so this slide we're going to talk a little bit about just to clarify what 654 00:46:11,520 --> 00:46:14,400 are the types of things that get notified to the ib 655 00:46:14,400 --> 00:46:20,079 in a ceasing of effect the only thing that we are concerned about in a ceasing 656 00:46:20,079 --> 00:46:24,319 of effect are changes to the scope of protection 657 00:46:24,319 --> 00:46:30,880 in the basic application or registration so what that boils down to is was there 658 00:46:30,880 --> 00:46:35,040 a change to the listing of goods and services or 659 00:46:35,040 --> 00:46:38,560 did the basic application or registration die 660 00:46:38,560 --> 00:46:42,480 those are the things that we notify so what are the things that don't get 661 00:46:42,480 --> 00:46:45,680 notified include things like oh you had an 662 00:46:45,680 --> 00:46:48,560 amendment to the drawing during prosecution 663 00:46:48,560 --> 00:46:54,720 or the mark description changed or a translation statement change a change 664 00:46:54,720 --> 00:46:57,760 in owner owner address none of these things are notified to the 665 00:46:57,760 --> 00:47:03,040 international bureau so keep that in mind if you file 666 00:47:03,040 --> 00:47:07,440 your international application while the basic is still 667 00:47:07,440 --> 00:47:12,560 pending or early on in the situation you may have some negative 668 00:47:12,560 --> 00:47:16,319 impacts to your international registration that you may not have 669 00:47:16,319 --> 00:47:21,440 intended so for that reason we encourage 670 00:47:21,440 --> 00:47:26,480 applicants to wait until at least you get your first office 671 00:47:26,480 --> 00:47:30,000 action on the basic application 672 00:47:30,000 --> 00:47:34,880 and in case you're worried about timing your priority claim is valid so long as 673 00:47:34,880 --> 00:47:38,000 your application is filed within six months 674 00:47:38,000 --> 00:47:44,240 of filing the us basic so you've got six months to play with 675 00:47:44,240 --> 00:47:48,400 and right now office pendency is at 2.6 months 676 00:47:48,400 --> 00:47:52,480 so you should receive your first office action within three months of filing 677 00:47:52,480 --> 00:47:56,559 your basic and then you'll have a sense of is there 678 00:47:56,559 --> 00:48:01,280 excuse me is there a substantive refusal am i going to have to reclassify goods 679 00:48:01,280 --> 00:48:05,520 and services or something like that you should have a sense of that within 680 00:48:05,520 --> 00:48:07,920 three months and then you still have time to file 681 00:48:07,920 --> 00:48:11,359 your international application 682 00:48:11,440 --> 00:48:16,960 here's some examples just because we're going to drill this point home with you 683 00:48:16,960 --> 00:48:22,000 so you know you might run into a problem if the mark is amended during 684 00:48:22,000 --> 00:48:25,680 prosecution and again i'm talking about in the basic application 685 00:48:25,680 --> 00:48:29,280 so an example that happens you know from time to time 686 00:48:29,280 --> 00:48:33,599 is that a hyphen in the mark will be deleted if you've already 687 00:48:33,599 --> 00:48:37,119 filed your international application with 688 00:48:37,119 --> 00:48:40,640 the hyphen in the mark there's no way to go back and amend the mark in the 689 00:48:40,640 --> 00:48:45,599 international registration you're stuck with the mark with a hyphen 690 00:48:45,599 --> 00:48:48,720 and then also what will happen from time to time is 691 00:48:48,720 --> 00:48:52,400 and this is less common but it could happen 692 00:48:52,400 --> 00:48:55,440 is that someone filed with a standard character mark 693 00:48:55,440 --> 00:48:58,960 and then they decided to amend the drawing to 694 00:48:58,960 --> 00:49:02,079 wording in a stylized font which is permissible 695 00:49:02,079 --> 00:49:07,200 as long as it's not material and you cannot make a corresponding change 696 00:49:07,200 --> 00:49:11,520 in your international registration your drawing is set forth when you 697 00:49:11,520 --> 00:49:17,200 file your international application another problem we see from time to time 698 00:49:17,200 --> 00:49:20,079 this creates issues is um changes in the 699 00:49:20,079 --> 00:49:26,160 classification of goods and services so what will happen from time to time is 700 00:49:26,160 --> 00:49:31,200 people will file for a listing of goods and services the example we have here 701 00:49:31,200 --> 00:49:37,920 is this is a broad id for goods in class 25 is what they filed in 702 00:49:37,920 --> 00:49:42,000 in the basic for headgear well headgear will allow you to amend to 703 00:49:42,000 --> 00:49:46,559 any clothing in class 25 any headgear in class 25 704 00:49:46,559 --> 00:49:50,240 as well as any headgear protective headgear in class 9 705 00:49:50,240 --> 00:49:55,040 so let's say the id in the basic is amended to motorcycle helmets in class 706 00:49:55,040 --> 00:50:00,720 9. if you had filed your international application immediately it went to it 707 00:50:00,720 --> 00:50:03,359 would go to the international bureau with headgear in 708 00:50:03,359 --> 00:50:07,440 class 25. well when your basic application 709 00:50:07,440 --> 00:50:11,599 registers with motorcycle helmets in class 9 we 710 00:50:11,599 --> 00:50:15,760 have to send a ceasing notice to the international registration to let them 711 00:50:15,760 --> 00:50:18,720 know that your id is now motorcycle helmet 712 00:50:18,720 --> 00:50:22,800 but we can't change the class the classification 713 00:50:22,800 --> 00:50:28,400 is permanently set to class 25. so we will be sending a ceasing notice that 714 00:50:28,400 --> 00:50:34,000 what remains protected is motorcycle helmets in class 25. 715 00:50:34,000 --> 00:50:38,559 there's a legal question as to how the jurisdictions where you filed your 716 00:50:38,559 --> 00:50:43,920 designations are going to handle that will they see that as you have nothing 717 00:50:43,920 --> 00:50:47,280 left protected in the mark that's going to depend on 718 00:50:47,280 --> 00:50:51,760 national law as to how they handle that so just be aware that that class changes 719 00:50:51,760 --> 00:50:56,400 can potentially be problematic for you 720 00:50:57,920 --> 00:51:01,440 okay and now that i've scared you i'm going to talk about maintaining an 721 00:51:01,440 --> 00:51:07,520 international registration okay so the international registration 722 00:51:07,520 --> 00:51:12,800 is valid for 10 years and that renewal period commences with 723 00:51:12,800 --> 00:51:15,680 the date of the the registration date of your international 724 00:51:15,680 --> 00:51:20,319 registration you have to file your renewal directly with the international 725 00:51:20,319 --> 00:51:24,319 bureau this is going to be the theme for the rest of this presentation that 726 00:51:24,319 --> 00:51:27,280 you have to file things directly with the ib 727 00:51:27,280 --> 00:51:32,160 they have a fully electronic renewal form you can use or a downloadable 728 00:51:32,160 --> 00:51:36,800 pdf mm-11 form both of which are found on 729 00:51:36,800 --> 00:51:41,200 wipo's website we don't process or forward these you have to go right to 730 00:51:41,200 --> 00:51:46,880 them so if you contact us we're going to send you right over to wipo and as i've 731 00:51:46,880 --> 00:51:49,359 said before if it's not renewed if your 732 00:51:49,359 --> 00:51:53,200 international registration is not renewed it will be canceled 733 00:51:53,200 --> 00:51:56,960 and then all of the designations all of your 734 00:51:56,960 --> 00:52:01,920 trademark applications and registrations that emanated from that international 735 00:52:01,920 --> 00:52:06,559 registration will also be cancelled so renewals are maintained centrally at 736 00:52:06,559 --> 00:52:11,359 the international bureau for changes 737 00:52:11,359 --> 00:52:15,440 to an international registration once again we're going out to the 738 00:52:15,440 --> 00:52:19,760 ib in order to make these so i have some listing of forms 739 00:52:19,760 --> 00:52:23,200 um here that tell you which forms you can do 740 00:52:23,200 --> 00:52:26,880 what with um but just some high points here if you're 741 00:52:26,880 --> 00:52:31,520 chain if you want to file an assignment that's on the mm5 form 742 00:52:31,520 --> 00:52:35,920 the ib also has a separate form if you have a non-transfer 743 00:52:35,920 --> 00:52:41,680 change in owner name or address or entity type that's the mm9 form 744 00:52:41,680 --> 00:52:45,520 there's a little error here on the slide if you have a change 745 00:52:45,520 --> 00:52:49,760 in the representative so this is the representative that's appointed 746 00:52:49,760 --> 00:52:52,960 for the applicant before the international bureau that 747 00:52:52,960 --> 00:52:56,880 is filed on the mm12 form and if you want to have a name 748 00:52:56,880 --> 00:53:00,800 change of that party or an address change for that party that's on the mm10 749 00:53:00,800 --> 00:53:05,920 form and then the last three options well i'll just talk about them 750 00:53:05,920 --> 00:53:10,480 individually we've got a little time the limitation of goods and services 751 00:53:10,480 --> 00:53:14,319 that is a restriction to an identification of goods and services 752 00:53:14,319 --> 00:53:18,480 that pertains only to one or more of the designations 753 00:53:18,480 --> 00:53:22,640 so it does not pertain to the international registration 754 00:53:22,640 --> 00:53:28,160 that's on the mm6 a renunciation that is like a surrender and it applies 755 00:53:28,160 --> 00:53:31,200 also to a designation or one or more 756 00:53:31,200 --> 00:53:37,119 designations and that's the mm7 form if you want to cancel the international 757 00:53:37,119 --> 00:53:41,440 registration in whole or in part that's the mm8 and a 758 00:53:41,440 --> 00:53:45,920 cancellation in part is basically deleting 759 00:53:45,920 --> 00:53:50,240 some goods or services out of the international registration so if you're 760 00:53:50,240 --> 00:53:55,119 doing that or you want to cancel it entirely that's the mm8 form and 761 00:53:55,119 --> 00:53:59,440 the link is the direct link to where you find the forms on 762 00:53:59,440 --> 00:54:02,720 the wipo website 763 00:54:02,800 --> 00:54:06,640 i'm not going to go through this entirely i'm going to hit the high point 764 00:54:06,640 --> 00:54:10,960 the main point i want you to take away from this is that if you need to file an 765 00:54:10,960 --> 00:54:14,000 assignment keep in mind that the ib doesn't require 766 00:54:14,000 --> 00:54:18,480 evidence of the change in ownership so you don't send supporting documents to 767 00:54:18,480 --> 00:54:20,880 the ib they don't want it they don't need it 768 00:54:20,880 --> 00:54:24,800 this is a very european bureaucracy they want the form just 769 00:54:24,800 --> 00:54:27,599 fill out the form 770 00:54:28,720 --> 00:54:35,760 and then this is my exception to file everything at the ib so 771 00:54:35,760 --> 00:54:39,200 the mm5 is your assignment your change of holder form 772 00:54:39,200 --> 00:54:43,599 and generally speaking it's going to be filed at the ib 773 00:54:43,599 --> 00:54:50,720 however the form requires the signatures of the assignor and the assignee 774 00:54:50,720 --> 00:54:55,520 so what if you can't what if the assignee can't get the signature of the 775 00:54:55,520 --> 00:54:58,400 assignor and this is when we have our little 776 00:54:58,400 --> 00:55:03,359 special quirky situation under these circumstances the madrid 777 00:55:03,359 --> 00:55:07,359 system provides for filing the mm5 with the national office 778 00:55:07,359 --> 00:55:12,880 rather than the ib when the assignee meets the madrid entitlement criteria 779 00:55:12,880 --> 00:55:17,359 meaning you're a citizen you're domiciled in or have a real 780 00:55:17,359 --> 00:55:22,079 and effective effective industrial or commercial presence in the jurisdiction 781 00:55:22,079 --> 00:55:25,520 and when the assignment pertains to an ir 782 00:55:25,520 --> 00:55:29,680 that's based on a basic application or registration 783 00:55:29,680 --> 00:55:34,559 from that jurisdiction or applies to a designation to that jurisdiction 784 00:55:34,559 --> 00:55:38,880 so in the context of what we're talking about the assignee has to be 785 00:55:38,880 --> 00:55:43,760 a citizen domiciled in or have a real and effective industrial or commercial 786 00:55:43,760 --> 00:55:48,079 presence in the united states and the assignment pertains to an 787 00:55:48,079 --> 00:55:50,960 international registration based on a u.s 788 00:55:50,960 --> 00:55:55,040 application or registration or it pertains to a designation to the united 789 00:55:55,040 --> 00:55:58,240 states which is an incoming madrid based application or 790 00:55:58,240 --> 00:56:00,880 registration 791 00:56:00,960 --> 00:56:04,319 we don't have a special electronic form to file this 792 00:56:04,319 --> 00:56:08,000 um we only get a handful of of these a year 793 00:56:08,000 --> 00:56:14,319 so you have to complete the download and complete the official copy of the mm5 794 00:56:14,319 --> 00:56:18,319 form from the wipo website and attach it to a petition to the 795 00:56:18,319 --> 00:56:22,160 director for an international application or registration and that's 796 00:56:22,160 --> 00:56:25,920 how you do this we do charge a 100 non-refundable 797 00:56:25,920 --> 00:56:28,640 transmittal fee and keep in mind there's no back and 798 00:56:28,640 --> 00:56:31,440 forth so either it meets the requirements or 799 00:56:31,440 --> 00:56:35,040 and we send it or it doesn't and we don't the 800 00:56:35,040 --> 00:56:39,319 all of the very specific requirements for this are set out in trademark rule 801 00:56:39,319 --> 00:56:42,720 7.23 so i encourage you to take a look at 802 00:56:42,720 --> 00:56:47,200 that if you find yourself in this situation 803 00:56:51,040 --> 00:56:56,000 okay and finally we have some important trademark contact information 804 00:56:56,000 --> 00:57:02,720 for you we have the contact information for the assignments recordation branch 805 00:57:02,720 --> 00:57:06,480 the madrid processing unit the petitions office 806 00:57:06,480 --> 00:57:10,079 and if you have problems with an electronic form 807 00:57:10,079 --> 00:57:14,839 please email the teas email box is t-e-a-s 808 00:57:14,839 --> 00:57:20,319 uspto.gov and that's manned between 8am and 8pm and then if you just have 809 00:57:20,319 --> 00:57:24,079 general how do i file these questions those can be directed to the trademark 810 00:57:24,079 --> 00:57:27,920 assistance center and the contact information 811 00:57:27,920 --> 00:57:34,400 is there for that so we are going to transition to the question and answer 812 00:57:34,400 --> 00:57:39,359 portion of the presentation i just want to remind you to put your 813 00:57:39,359 --> 00:57:42,240 questions in the chat window i see a lot of you have already 814 00:57:42,240 --> 00:57:46,160 figured that out or heard the announcement at the very beginning 815 00:57:46,160 --> 00:57:50,880 so thank you for that and you want to make sure that in the little to field 816 00:57:50,880 --> 00:57:56,960 the little drop down you select all panelists and that way we can view it 817 00:58:01,520 --> 00:58:09,839 and we're going to take a minute to just pull those questions for you 818 00:58:10,480 --> 00:58:14,079 okay actually while we're pulling questions let me just 819 00:58:14,079 --> 00:58:17,599 um because i did see a couple of pop-up questions come in 820 00:58:17,599 --> 00:58:22,400 during the presentation so somebody had asked about whether 821 00:58:22,400 --> 00:58:26,400 they will get copies of the slides and we just want to remind you that a link 822 00:58:26,400 --> 00:58:29,520 to the slides are will be shared with all attendees 823 00:58:29,520 --> 00:58:33,119 that registered so everybody will get a copy 824 00:58:33,119 --> 00:58:38,640 of the slides or a link to up to the slides um so those will be made 825 00:58:48,839 --> 00:58:51,839 available 826 00:58:53,440 --> 00:59:05,839 and also a recording of the presentation will be posted on the uspto website 827 00:59:09,920 --> 00:59:13,200 so i did get i did see one question regarding the 828 00:59:13,200 --> 00:59:16,880 payment and refund of fees so if i wanted 829 00:59:16,880 --> 00:59:21,920 the question correctly if an international application is filed 830 00:59:21,920 --> 00:59:25,200 and it is denied certification all the relevant 831 00:59:25,200 --> 00:59:28,880 international filing fees will be automatically refunded 832 00:59:28,880 --> 00:59:33,760 back to you the only fee that will not be refunded is the certification fees 833 00:59:33,760 --> 00:59:37,040 and if at that point you decide to just refile 834 00:59:37,040 --> 00:59:42,880 a whole new international application um you would obviously have to repay those 835 00:59:42,880 --> 00:59:46,799 international application fees which were refunded to you before 836 00:59:46,799 --> 00:59:50,720 and unfortunately you have to pay the additional 837 00:59:50,720 --> 01:00:00,799 certification fee because it's a new international application 838 01:00:00,799 --> 01:00:04,240 and um we also had a question about transformation 839 01:00:04,240 --> 01:00:08,240 we have a couple of questions about transformation i'm going to read them 840 01:00:08,240 --> 01:00:14,720 um if the u.s basic application or registration is cancelled 841 01:00:14,720 --> 01:00:18,799 or abandoned isn't it possible to nationalize the ir designations and keep 842 01:00:18,799 --> 01:00:22,000 the registration in the designated countries 843 01:00:22,000 --> 01:00:28,000 yes thank you for asking that question so we were talking about the worst 844 01:00:28,000 --> 01:00:31,839 possible case scenario where your basic dies 845 01:00:31,839 --> 01:00:35,839 and your international registration is canceled so 846 01:00:35,839 --> 01:00:40,559 you have a provision in the treaty that when 847 01:00:40,559 --> 01:00:45,440 the international registration is cancelled because of a ceasing of effect 848 01:00:45,440 --> 01:00:50,160 so the death of the basic application or registration 849 01:00:50,160 --> 01:00:56,880 you have the ability to file what is called a request for transformation it's 850 01:00:56,880 --> 01:01:03,920 it is within a three-month deadline so you need to be vigilant of this be 851 01:01:03,920 --> 01:01:08,400 vigilant of the death of the ir so that you can stay on top of your 852 01:01:08,400 --> 01:01:11,839 deadlines but essentially what happens is you file 853 01:01:11,839 --> 01:01:16,799 a request for transformation in the jurisdiction of the designation 854 01:01:16,799 --> 01:01:19,440 so you filed from the u.s you designated 855 01:01:19,440 --> 01:01:23,680 france and your basic died and then you have to 856 01:01:23,680 --> 01:01:26,240 file your request for transformation in 857 01:01:26,240 --> 01:01:29,760 france and you're requesting to have your 858 01:01:29,760 --> 01:01:34,240 registered or pending extension of protection 859 01:01:34,240 --> 01:01:40,240 um transformed into a national application or registration so that's 860 01:01:40,240 --> 01:01:42,880 how that works 861 01:01:47,839 --> 01:01:52,960 so there's a question with a subsequent designation um 862 01:01:52,960 --> 01:01:57,440 the subsequent designation would only be made after the international bureau 863 01:01:57,440 --> 01:02:03,039 issues the international registration so if it hasn't issued yet you would have 864 01:02:03,039 --> 01:02:06,799 to wait for the application to issue as a 865 01:02:06,799 --> 01:02:10,720 registration and then you can file subsequent 866 01:02:10,720 --> 01:02:13,440 designations 867 01:02:17,359 --> 01:02:23,359 we have a question about local council i'm going to read that i was under the 868 01:02:23,359 --> 01:02:27,280 impression that after filing an international application you need a 869 01:02:27,280 --> 01:02:31,680 foreign correspondent if you received an an official excuse me official action 870 01:02:31,680 --> 01:02:37,440 from a particular country okay this is very jurisdiction dependent 871 01:02:37,440 --> 01:02:43,680 so it is definitely true that it is more common that most foreign jurisdictions 872 01:02:43,680 --> 01:02:49,760 do require local council in order to respond to um 873 01:02:49,760 --> 01:02:56,640 an office action from their um ip office but it is jurisdiction dependent so it's 874 01:02:56,640 --> 01:03:00,960 not it's not an across-the-board rule it's not a feature of the treaty it's a 875 01:03:00,960 --> 01:03:06,319 it's controlled by national law and then i'm going to answer a related 876 01:03:06,319 --> 01:03:10,720 question which is can a u.s attorney file directly forms with the ib or do 877 01:03:10,720 --> 01:03:15,200 you need international counsel a u.s attorney actually the 878 01:03:15,200 --> 01:03:20,480 international bureau doesn't require that the representatives before the ibb 879 01:03:20,480 --> 01:03:25,039 attorneys at all they just are representing the applicant 880 01:03:25,039 --> 01:03:28,319 so um and i think what they're relying on 881 01:03:28,319 --> 01:03:32,079 are local rules for representation perhaps i'm not really sure 882 01:03:32,079 --> 01:03:38,480 but yes a u.s attorney can file forms directly with the ib 883 01:03:42,839 --> 01:03:47,200 absolutely so we have a question um to explain the 884 01:03:47,200 --> 01:03:51,520 difference between the two month priority and six month 885 01:03:51,520 --> 01:03:57,039 priority so the two months and the six months 886 01:03:57,039 --> 01:04:01,039 part window that we were talking about during today's presentation really 887 01:04:01,039 --> 01:04:05,839 pertains to one the international registration date 888 01:04:05,839 --> 01:04:10,559 we have when you file your international application with the uspto 889 01:04:10,559 --> 01:04:13,839 we have two months to get that international application 890 01:04:13,839 --> 01:04:20,319 to the ib in order for you to preserve that filing date the six month 891 01:04:20,319 --> 01:04:26,880 claim of priority has to do with claiming priority um so if you 892 01:04:26,880 --> 01:04:30,160 filed an application in the u.s and it's pending 893 01:04:30,160 --> 01:04:33,839 you have six months to claim priority on that filing date 894 01:04:33,839 --> 01:04:38,559 when you file the international application and that will carry 895 01:04:38,559 --> 01:04:42,160 through to the international application so 896 01:04:42,160 --> 01:04:48,640 those two dates are not really a priority one really has to do 897 01:04:48,640 --> 01:04:51,280 with the window of us filing the international 898 01:04:51,280 --> 01:04:54,000 application or getting that international application 899 01:04:54,000 --> 01:04:58,000 to the ib and one just has to do with the claim of priority 900 01:04:58,000 --> 01:05:09,839 so i hope i answered that question 901 01:05:12,640 --> 01:05:18,160 um we got a question asking about i'm just going to read the question i 902 01:05:18,160 --> 01:05:22,240 noticed that in some instances we receive notifications from 903 01:05:22,240 --> 01:05:27,760 designated countries with a different registration date however it seems that 904 01:05:27,760 --> 01:05:31,599 we should not necessarily pay attention to these registration dates 905 01:05:31,599 --> 01:05:37,039 rather only the ir registration date in terms of docketing for a renewal is 906 01:05:37,039 --> 01:05:42,160 this true okay so in terms of filing renewals 907 01:05:42,160 --> 01:05:46,480 yes the renewal deadline for the trademark 908 01:05:46,480 --> 01:05:50,640 is going to be tied to the international registration date 909 01:05:50,640 --> 01:05:55,039 however different jurisdictions have additional maintenance filing 910 01:05:55,039 --> 01:05:59,039 requirements for example the united states you know 911 01:05:59,039 --> 01:06:01,520 this isn't applicable in this context but just 912 01:06:01,520 --> 01:06:07,359 as an example we require showings of use periodic showings of use 913 01:06:07,359 --> 01:06:11,839 in order to maintain your registration so even if someone were filing from 914 01:06:11,839 --> 01:06:16,079 madrid to us they still have to meet those requirements so you're definitely 915 01:06:16,079 --> 01:06:20,720 going to want to check local you know the national law where 916 01:06:20,720 --> 01:06:23,680 those designations are registered to see if 917 01:06:23,680 --> 01:06:26,720 you have any additional maintenance requirements 918 01:06:26,720 --> 01:06:33,839 beyond filing a renewal 919 01:06:41,440 --> 01:06:46,000 um so there is a question about the difference between a 920 01:06:46,000 --> 01:06:52,240 home application and a claim of priority on the international application forms 921 01:06:52,240 --> 01:06:54,480 um 922 01:06:54,640 --> 01:06:57,920 it depends so if your international application 923 01:06:57,920 --> 01:07:01,280 is based on let's say one application and you're 924 01:07:01,280 --> 01:07:05,440 claiming you're asserting a claim of priority based on that one 925 01:07:05,440 --> 01:07:08,880 application and you're within the six-month priority period 926 01:07:08,880 --> 01:07:12,000 then yes in your international application the 927 01:07:12,000 --> 01:07:17,200 basic application and the um the application number of which you're 928 01:07:17,200 --> 01:07:21,520 claiming priority would be the same serial number if 929 01:07:21,520 --> 01:07:26,319 um you're basing your international application on multiple applications 930 01:07:26,319 --> 01:07:29,680 or on an out combination of an application or registration 931 01:07:29,680 --> 01:07:33,039 obviously that would that would differ the listing of the various 932 01:07:33,039 --> 01:07:35,839 basic applications of basic registrations would be a listing of all 933 01:07:35,839 --> 01:07:38,799 the goods i mean all the applications and registrations 934 01:07:38,799 --> 01:07:42,640 that you are utilizing and the claim of priority would be 935 01:07:42,640 --> 01:07:46,880 only those where you're within that six-month window of claiming 936 01:07:46,880 --> 01:07:49,520 priority 937 01:07:54,079 --> 01:07:58,319 we have a question where someone is asking if we can make changes to an 938 01:07:58,319 --> 01:08:02,400 international registration with the ib prior 939 01:08:02,400 --> 01:08:09,599 to the termination of the five-year dependency period and the answer 940 01:08:09,599 --> 01:08:15,760 is yes now the types of changes you'll be filing would be you know 941 01:08:15,760 --> 01:08:19,759 changes in the scope of the id changes in ownership those types of 942 01:08:19,759 --> 01:08:22,560 things so as we said you can't change the drawing 943 01:08:22,560 --> 01:08:26,080 you can't do those types of changes at all and dependency has nothing to do 944 01:08:26,080 --> 01:08:29,199 with it but you can file let's say you want to 945 01:08:29,199 --> 01:08:33,520 restrict the goods and services in the international registration that's 946 01:08:33,520 --> 01:08:36,719 the cancellation form you'll just cancel it 947 01:08:36,719 --> 01:08:40,400 as to only particular goods and services and again if you're 948 01:08:40,400 --> 01:08:45,120 filing a change of ownership or if you want to change the owner address 949 01:08:45,120 --> 01:08:48,080 or something like that 950 01:08:50,839 --> 01:08:53,839 definitely 951 01:08:54,080 --> 01:08:57,199 can work registered on the supplemental register 952 01:08:57,199 --> 01:09:01,359 be a basic application for an international application 953 01:09:01,359 --> 01:09:06,960 the answer is yes pending applications or registrations on the supplemental 954 01:09:06,960 --> 01:09:10,159 register can be a basis for an international 955 01:09:10,159 --> 01:09:12,799 application 956 01:09:16,400 --> 01:09:21,679 and a question i absolutely love they filed on may 15 and received 957 01:09:21,679 --> 01:09:25,279 confirmation that we receive the filing and that 958 01:09:25,279 --> 01:09:29,600 confirmation receipt contains a reference number where do i check on 959 01:09:29,600 --> 01:09:34,239 the status of the filing tsdr this is so exciting 960 01:09:34,239 --> 01:09:39,279 so the reference number that is assigned to the international 961 01:09:39,279 --> 01:09:46,799 application starts with a letter and if you go to the trademark 962 01:09:46,799 --> 01:09:52,239 document status tsdr um system i can pull it up here in a second 963 01:09:52,239 --> 01:09:54,560 and show you you can use your reference number 964 01:09:54,560 --> 01:09:57,920 there where you would normally put in an application serial number of a 965 01:09:57,920 --> 01:10:01,679 registration number and it will pull up the file for you and 966 01:10:01,679 --> 01:10:05,840 then you can view all the documents in that file 967 01:10:05,840 --> 01:10:13,040 and i will just go a little crazy here and show you what i'm talking about 968 01:10:14,640 --> 01:10:23,679 here's my little link tsdr at uspto.gov it takes a reference number and i don't 969 01:10:23,679 --> 01:10:29,040 actually happen to have one handy um off the top of my head but um 970 01:10:29,040 --> 01:10:31,840 or actually 971 01:10:32,480 --> 01:10:36,800 this you should probably never do um 972 01:10:36,880 --> 01:10:44,080 but it is all public record so status gives you the status 973 01:10:44,080 --> 01:10:47,280 and if you click on documents you can see everything that's happened in the 974 01:10:47,280 --> 01:10:49,920 application 975 01:10:51,199 --> 01:10:59,840 i'm going to switch back over so you can see the contact information again 976 01:11:11,840 --> 01:11:13,920 you 977 01:11:26,320 --> 01:11:31,120 so we have a question about um how do you know which designated countries are 978 01:11:31,120 --> 01:11:34,480 still active in your international registration 979 01:11:34,480 --> 01:11:38,480 so the so the simplest answer would really be to go to 980 01:11:38,480 --> 01:11:43,120 wipo's website it's a fairly straightforward 981 01:11:43,120 --> 01:11:47,520 website that pretty easily searchable you just type in your international 982 01:11:47,520 --> 01:11:51,600 registration number in the little search function and all the various 983 01:11:51,600 --> 01:11:55,760 documents the basic goods and services listing the 984 01:11:55,760 --> 01:11:58,400 countries that were originally designated 985 01:11:58,400 --> 01:12:01,679 and all of these subsequent communications from the 986 01:12:01,679 --> 01:12:07,040 designated countries it should all appear on that website and that 987 01:12:07,040 --> 01:12:10,320 would probably be the best way that you could figure out 988 01:12:10,320 --> 01:12:13,920 what's going on with your international 989 01:12:20,840 --> 01:12:23,840 registration 990 01:12:25,679 --> 01:12:30,480 um there's a question someone asked if it's possible to file forms like the mm6 991 01:12:30,480 --> 01:12:34,000 with the uspto or do the forms have to be filed directly with 992 01:12:34,000 --> 01:12:41,520 wipo so the mm6 is a limitation form that form needs to be filed directly 993 01:12:41,520 --> 01:12:44,960 with wipo when in doubt the form has to be filed 994 01:12:44,960 --> 01:12:48,400 with wipo the exceptions are the international 995 01:12:48,400 --> 01:12:51,840 application form obviously that comes through us 996 01:12:51,840 --> 01:12:55,440 you can file the subsequent designation with us or 997 01:12:55,440 --> 01:13:00,719 with the ib once the international registration has issued you 998 01:13:00,719 --> 01:13:04,400 have to have the international registration number i'm sort of folding 999 01:13:04,400 --> 01:13:07,679 in another question you have to have an international 1000 01:13:07,679 --> 01:13:11,600 registration number in order to file the subsequent designation 1001 01:13:11,600 --> 01:13:17,520 however limitations i'm not sure if you were asking specifically about that form 1002 01:13:17,520 --> 01:13:22,239 the mm6 or if you were asking about limitations 1003 01:13:22,239 --> 01:13:25,840 as a filing so when you file your international 1004 01:13:25,840 --> 01:13:30,400 application or if you're filing a subsequent designation 1005 01:13:30,400 --> 01:13:34,159 you can include limitations to the goods and services 1006 01:13:34,159 --> 01:13:37,440 for specific countries that you're designating 1007 01:13:37,440 --> 01:13:41,440 so you can do that in those forms but if you're filing it separately 1008 01:13:41,440 --> 01:13:45,600 from the international application or the subsequent designation 1009 01:13:45,600 --> 01:13:49,600 then you're using the mm6 form and that does have to be filed directly 1010 01:13:49,600 --> 01:13:52,320 with the ib 1011 01:13:59,679 --> 01:14:02,800 so we have a question about the best way to 1012 01:14:02,800 --> 01:14:07,280 update the owner information with the uspto before filing the international 1013 01:14:07,280 --> 01:14:10,480 registration um so if you've already filed the 1014 01:14:10,480 --> 01:14:14,239 assignment it does depending on which day you filed it the 1015 01:14:14,239 --> 01:14:18,880 assignments are auto updated i believe on wednesday 1016 01:14:18,880 --> 01:14:22,239 nights so if you kind of fall in that awkward 1017 01:14:22,239 --> 01:14:25,199 period where you need to file the international 1018 01:14:25,199 --> 01:14:29,600 application prior to update you can just go ahead and file the um 1019 01:14:29,600 --> 01:14:34,719 using the free text form enter the correct information 1020 01:14:34,719 --> 01:14:38,880 so let's say the the owner information has it has not changed in the uspto 1021 01:14:38,880 --> 01:14:42,960 records you want to clearly identify the correct owner name 1022 01:14:42,960 --> 01:14:47,760 in your international application form and it will probably get denied 1023 01:14:47,760 --> 01:14:50,080 certification at that point we can pull the 1024 01:14:50,080 --> 01:14:55,520 international application and once the record has updated or if it 1025 01:14:55,520 --> 01:14:58,640 hasn't we can look into that to ensure that it has updated 1026 01:14:58,640 --> 01:15:02,159 and that would probably be depending again 1027 01:15:02,159 --> 01:15:05,520 on your timing issues disclaimer priority 1028 01:15:05,520 --> 01:15:13,520 that's probably the um the most expedient way to file the international 1029 01:15:22,840 --> 01:15:25,840 application 1030 01:15:57,760 --> 01:16:00,960 we're reading questions we're trying to pull everything we're getting them in 1031 01:16:00,960 --> 01:16:04,719 batches so my apologies for some of the delays in 1032 01:16:04,719 --> 01:16:07,600 the timing it's taking us to get to the 1033 01:16:07,600 --> 01:16:10,000 questions 1034 01:16:10,080 --> 01:16:13,120 somebody had a follow-up question on transformation 1035 01:16:13,120 --> 01:16:17,440 because i did not cover this and the question is if some classes 1036 01:16:17,440 --> 01:16:21,360 but not all are deleted from the basic u.s application 1037 01:16:21,360 --> 01:16:25,040 is transformation available for the canceled classes 1038 01:16:25,040 --> 01:16:29,760 yeah it's called a partial ca partial transformation you can absolutely 1039 01:16:29,760 --> 01:16:35,040 transform goods and services that were deleted 1040 01:16:35,040 --> 01:16:41,520 from the designation because those goods or services were deleted 1041 01:16:41,520 --> 01:16:45,760 from the um the basic application or 1042 01:16:45,760 --> 01:16:50,159 registration so you can file a partial transformation it's not class based it's 1043 01:16:50,159 --> 01:16:53,760 actually based on the goods and services 1044 01:16:58,960 --> 01:17:03,920 so there's a question about whether the international registration is only 1045 01:17:03,920 --> 01:17:07,760 effective if the designated countries approves it 1046 01:17:07,760 --> 01:17:12,880 for registration in the country so the international 1047 01:17:12,880 --> 01:17:17,760 registration is issued by the international bureau 1048 01:17:17,760 --> 01:17:23,120 and once that ir issues it is notified through the um request for extension 1049 01:17:23,120 --> 01:17:25,760 protection to whichever countries you want to 1050 01:17:25,760 --> 01:17:29,760 designate so if there are some countries that you 1051 01:17:29,760 --> 01:17:33,360 designate that for whatever reason issues of refusal and you are not able 1052 01:17:33,360 --> 01:17:35,920 to actually um get protection in those 1053 01:17:35,920 --> 01:17:38,480 countries it doesn't really affect the 1054 01:17:38,480 --> 01:17:41,040 international registration at the ib level 1055 01:17:41,040 --> 01:17:45,360 because you can always take that international registration from the ib 1056 01:17:45,360 --> 01:17:48,560 and subsequently designate other countries or 1057 01:17:48,560 --> 01:17:53,040 perhaps in 10 years that country that you really want to get protection in 1058 01:17:53,040 --> 01:17:57,360 perhaps in 10 years you will refile via a subsequent designation 1059 01:17:57,360 --> 01:18:03,920 and get protection then so it's a it's not that it's not effective um the 1060 01:18:03,920 --> 01:18:06,239 international legislation sort of stands on its own 1061 01:18:06,239 --> 01:18:12,159 at the international bureau and how and the scope of your use of that 1062 01:18:12,159 --> 01:18:17,679 international legislation to designate the contracting parties that's really 1063 01:18:17,679 --> 01:18:22,159 going to determine the scope of your protection 1064 01:18:24,840 --> 01:18:27,840 worldwide 1065 01:19:08,080 --> 01:19:11,280 debbie i'm going to jump ahead of you if you don't mind 1066 01:19:11,280 --> 01:19:15,600 no go ahead um so this is a great question 1067 01:19:15,600 --> 01:19:18,960 so the question is is the two-month window for the pto to get the 1068 01:19:18,960 --> 01:19:23,840 application to the ib how often does that window not get met 1069 01:19:23,840 --> 01:19:28,239 and what can the applicant do to make sure that this two-month window 1070 01:19:28,239 --> 01:19:34,640 gets met so the short answer is if you receive a denial of certification 1071 01:19:34,640 --> 01:19:40,800 and you intend to file a petition file that petition as soon as possible 1072 01:19:40,800 --> 01:19:45,520 if you file that petition quickly there's no reason why we wouldn't be 1073 01:19:45,520 --> 01:19:50,239 able to um work through the the issues um 1074 01:19:50,239 --> 01:19:55,040 having said that if there's some deep substantive issue for the denial of cert 1075 01:19:55,040 --> 01:19:59,040 um again we would have to you know look at the the specifics of it 1076 01:19:59,040 --> 01:20:04,080 but in order to um ensure that that two-month window gets met 1077 01:20:04,080 --> 01:20:08,719 you would need to file that petition as quickly as possible 1078 01:20:08,719 --> 01:20:12,960 if you wait till let's say the last day of that two-month window 1079 01:20:12,960 --> 01:20:16,560 i mean it's sort of difficult to review the petition 1080 01:20:16,560 --> 01:20:21,199 and if there's a substitute mm2 involved to review the substitute mm2 1081 01:20:21,199 --> 01:20:26,239 to ensure that all the information is correct and then to grant the petition 1082 01:20:26,239 --> 01:20:31,360 and then to transmit that to the ib because it's got to be received by the 1083 01:20:31,360 --> 01:20:36,000 ib it's not the date that the the uspto sends the international 1084 01:20:36,000 --> 01:20:40,239 application it's when the ib receives it so 1085 01:20:40,239 --> 01:20:43,360 if i can just say this one more time if you can file that petition as quickly as 1086 01:20:43,360 --> 01:20:47,840 possible that definitely goes a long way 1087 01:20:52,880 --> 01:20:56,000 i'm going to read a question that i can't answer because i think it's 1088 01:20:56,000 --> 01:21:00,639 actually worth reading the question if we have to comply with all local 1089 01:21:00,639 --> 01:21:04,239 jurisdictions and presumably retain local council what is the relative 1090 01:21:04,239 --> 01:21:09,360 frequency of local issues coming up that is a question that we don't have 1091 01:21:09,360 --> 01:21:14,000 the data on um we don't have any of the 1092 01:21:14,000 --> 01:21:22,320 statistics on how frequently other offices are issuing refusals 1093 01:21:22,320 --> 01:21:28,080 and you know what are the common bases however the international bureau does 1094 01:21:28,080 --> 01:21:33,440 track some of that information so it would be 1095 01:21:33,440 --> 01:21:38,320 worthwhile going out to the to the wipo website 1096 01:21:38,320 --> 01:21:43,280 and taking a look at their statistics if you start from that 1097 01:21:43,280 --> 01:21:48,320 madrid page that i showed you they do have links to their filing statistics 1098 01:21:48,320 --> 01:21:53,360 and then um because there are a number of questions that we receive that 1099 01:21:53,360 --> 01:21:59,360 actually do pertain to local to national law and local rules i wanted 1100 01:21:59,360 --> 01:22:04,639 to let you know that the international bureau also maintains 1101 01:22:04,639 --> 01:22:09,679 a database that contains legal information 1102 01:22:09,679 --> 01:22:14,159 or information about the laws and practice of all the madrid member states 1103 01:22:14,159 --> 01:22:17,679 so that database is also linked from that madrid 1104 01:22:17,679 --> 01:22:24,239 webpage and the information is not updated by the international bureau it 1105 01:22:24,239 --> 01:22:28,560 is updated and maintained by the different national 1106 01:22:28,560 --> 01:22:33,040 offices so the different national ip offices are responsible for the content 1107 01:22:33,040 --> 01:22:36,239 in that database which is good in the sense that you're 1108 01:22:36,239 --> 01:22:41,040 getting it from an authority but sometimes it can be challenging 1109 01:22:41,040 --> 01:22:44,880 depending on you know how frequently they are able to 1110 01:22:44,880 --> 01:22:48,639 update that information and keep it current so 1111 01:22:48,639 --> 01:22:52,719 the relevance for you may depend from country to country but 1112 01:22:52,719 --> 01:22:56,320 it is definitely an excellent resource to get a feel for 1113 01:22:56,320 --> 01:23:00,159 how their practice might be different for example are you filing into a 1114 01:23:00,159 --> 01:23:03,360 jurisdiction that does not do any searching of the mark before the 1115 01:23:03,360 --> 01:23:06,560 registration issues super important to know what your 1116 01:23:06,560 --> 01:23:21,840 registration means so that's an example 1117 01:23:27,679 --> 01:23:31,840 we have a question about whether madrid filings through the uspto is subject to 1118 01:23:31,840 --> 01:23:36,239 the u.s council rule um 1119 01:23:36,239 --> 01:23:41,040 debbie do you want to take that one yeah it's a squeegee answer 1120 01:23:41,040 --> 01:23:49,120 technically yes but our system the international application 1121 01:23:49,120 --> 01:23:52,719 form and the subsequent designation forms 1122 01:23:52,719 --> 01:23:57,360 we were not able to update the back end of the system to accommodate the us 1123 01:23:57,360 --> 01:24:04,000 council information to make it mandatory so if you so the answer is 1124 01:24:04,000 --> 01:24:08,400 yes um it's encompassed by the rule change but the forms are not 1125 01:24:08,400 --> 01:24:12,239 enforcing it and we're not going to deny certification 1126 01:24:12,239 --> 01:24:17,840 um for that reason 1127 01:24:37,280 --> 01:24:41,520 okay i have another question about ceasing of effects 1128 01:24:41,520 --> 01:24:45,679 where the international registration is already past five years old when a 1129 01:24:45,679 --> 01:24:50,320 subsequent designation is filed will there be a ceasing of 1130 01:24:50,320 --> 01:24:54,960 effect issue in play i sort of reworded your question but 1131 01:24:54,960 --> 01:24:57,920 sorry but that that's the meat of the question 1132 01:24:57,920 --> 01:25:02,320 and the answer is the dependency period you've got it i 1133 01:25:02,320 --> 01:25:04,560 intuitively i think you understand it the 1134 01:25:04,560 --> 01:25:09,040 dependency period is linked to the registration date of the international 1135 01:25:09,040 --> 01:25:13,440 registration so if that registration is already past 1136 01:25:13,440 --> 01:25:17,040 the dependency period if it's older than five years 1137 01:25:17,040 --> 01:25:22,159 then all of the designations are free the the dependency period and the 1138 01:25:22,159 --> 01:25:25,840 ceasing of effects are no longer an issue across the board 1139 01:25:25,840 --> 01:25:41,840 so it doesn't matter that you're filing a new subsequent designation that's fine 1140 01:26:15,120 --> 01:26:19,840 someone asked if goods can be added to the international registration 1141 01:26:19,840 --> 01:26:25,840 and that answer is no the scope of the international registration cannot 1142 01:26:25,840 --> 01:26:29,679 be changed i think where the confusion came is when 1143 01:26:29,679 --> 01:26:32,159 i was talking about subsequent designations 1144 01:26:32,159 --> 01:26:36,000 and i said one of the reasons you may want to file a subsequent 1145 01:26:36,000 --> 01:26:41,679 designation is if you've already filed a designation in a country let's 1146 01:26:41,679 --> 01:26:44,880 say france you've already designated france 1147 01:26:44,880 --> 01:26:49,360 and you want to expand the listing of goods and services 1148 01:26:49,360 --> 01:26:52,880 based on the international registration that are in france so when you filed 1149 01:26:52,880 --> 01:26:56,560 initially you only filed for some of the goods and 1150 01:26:56,560 --> 01:26:59,840 services in france so you filed a limitation and 1151 01:26:59,840 --> 01:27:02,800 now you're making money hand over fist and 1152 01:27:02,800 --> 01:27:06,880 you want to expand the scope of what you're selling in 1153 01:27:06,880 --> 01:27:10,719 france you can file a subsequent designation to 1154 01:27:10,719 --> 01:27:13,040 indicate that you want to seek protection 1155 01:27:13,040 --> 01:27:17,199 for additional goods and services so long as they are 1156 01:27:17,199 --> 01:27:20,320 already included in the international registration 1157 01:27:20,320 --> 01:27:23,440 so the scope of the international registration 1158 01:27:23,440 --> 01:27:26,560 the outer scope of the international registration 1159 01:27:26,560 --> 01:27:33,199 is set when you file your international application at that point from that 1160 01:27:33,199 --> 01:27:47,840 point forward all you can do is make it more narrow 1161 01:27:49,840 --> 01:27:54,880 okay so we haven't even put a dent in your questions but it's 4 30. 1162 01:27:54,880 --> 01:28:02,000 so i wanted to let you know first of all that any questions that you've asked 1163 01:28:02,000 --> 01:28:07,679 that we were not able to get to please email them to the tm policy 1164 01:28:07,679 --> 01:28:13,679 mailbox that email address is tm policy tm 1165 01:28:13,679 --> 01:28:21,679 icy at uspto.gov and we will respond to your email 1166 01:28:21,679 --> 01:28:27,600 from that from that mailbox also we wanted to ask for your feedback on 1167 01:28:27,600 --> 01:28:31,760 the webinar we are always looking to improve what we 1168 01:28:31,760 --> 01:28:37,360 do and we would love to hear from you so for that please email any feedback 1169 01:28:37,360 --> 01:28:41,199 you have to tm underscore 1170 01:28:41,199 --> 01:28:48,719 webinar w-e-b-i-n-a-r uspto.gov again we really 1171 01:28:48,719 --> 01:28:54,159 appreciate your comments and your suggestions 1172 01:28:55,199 --> 01:28:58,880 and i don't know kelly if there's any if there are any other announcements i may 1173 01:28:58,880 --> 01:29:01,679 have forgotten i'm going to rely on you to jump in and 1174 01:29:01,679 --> 01:29:04,239 save the day 1175 01:29:04,800 --> 01:29:09,040 we keep getting questions about whether the presentation the slides will be 1176 01:29:09,040 --> 01:29:14,880 available and again both the recording of the presentation and the 1177 01:29:14,880 --> 01:29:19,920 slides will be available on the uspto website 1178 01:29:20,880 --> 01:29:24,000 with that thank you so much for attending we 1179 01:29:24,000 --> 01:29:33,600 really appreciate your participation and have a great afternoon!