Madrid Protocol: Tips for filers of Responses to Notices of Irregularity

Madrid Protocol: Responding to Madrid Notices of Irregularity

After an International Application is certified by the United States Patent and Trademark Office (USPTO), it is forwarded to the International Bureau ("the IB") of the World Intellectual Property Organization (WIPO). Whenever the IB considers that there is an irregularity in an International Application, the IB will notify both the USPTO (as Office of origin) and the applicant.

The USPTO has deployed electronic forms for the filing of a response to a Notice of Irregularity in an international application.


Types of irregularities

The IB identifies three general categories of irregularities:

  • a. Irregularities with respect to the classification of goods/services
  • b. Irregularities with respect to the indication of goods/services
  • c. Other irregularities

a. Irregularities with respect to the classification of goods/services

The IB has the final decision regarding the classification and grouping of goods and services in the international application. If the goods/services are not grouped in the appropriate class(es), the IB will make a proposal, and notify the USPTO and the applicant. In such instances where the applicant elects to submit a response, the U.S. Rules of Practice in Trademark Cases require that the applicant respond within the time period set forth in the notice via the USPTO. 37 C.F.R. §7.14(e). The USPTO reviews applicant's response, and, if acceptable, will forward the response to the IB. If the applicant does not respond, and no additional fees are due, the IB will register the mark with the classification and grouping that it considers to be correct. If the notice requires the payment of fees, any fees due must be paid directly to the IB. 37 C.F.R. §7.14(c). If these fees are not paid within the time period indicated, the international application will be considered abandoned.

b. Irregularities with respect to the indication of goods/services

If the IB considers that a term used in the list of goods and services is too vague for the purposes of classification, is incomprehensible, or is linguistically incorrect, it will notify the USPTO and the applicant. The IB may suggest either a substitute term or the deletion of the term. In such instances where the applicant elects to submit a response, the response must be submitted via the USPTO. 37 C.F.R. §7.14(e) The USPTO reviews all such responses, and, if acceptable, will forward the response to the IB. The applicant need not adopt the suggestions of the IB if such suggestions are not accurate or are otherwise outside the scope of the basic application/registration. As the USPTO requires an international application to specify the International Class(es) of goods/services, the IB will include the questionable term in the international register in the class provided in the application, even if the applicant fails to respond to the irregularity. However, the IB will indicate that such terminology, in the opinion of the IB, is too vague for the purposes of classification, is incomprehensible or is linguistically incorrect, as the case may be. Each designated country will receive this notation in the request for extension of protection forwarded to it by the IB. Regardless of whether the applicant responds, if there are any additional fees due, the IB will not register the mark unless such fees paid in the time allowed.

c. Other irregularities

Other irregularities may be further divided into those requiring remedy by the USPTO, those requiring remedy by the applicant, and those that may be remedied by either the USPTO or the applicant. Irregularities requiring remedy by the USPTO will be addressed by the USPTO without any responsibility on the part of the applicant.

Irregularities that require remedy by the applicant include (1) insufficient information regarding applicant or representative; (2) priority claims are insufficient; (3) reproduction of the mark is not sufficiently clear; (4) no fees have been paid; (5) amount of fees is insufficient; (6) limitation of the list of goods/services refers to classes not covered by the main list; (7) mark contains matter in characters other than Latin characters or Arabic numerals without a transliteration of such matter; (8) application contains a color claim but no color reproduction of the mark has been submitted.

The applicant may use the electronic form provided for Responses to Notices of Irregularity offered by the USPTO. As long as such response does not involve the classification or indication of the goods/services or payment of fees, the USPTO will simply forward the response to the IB and will not review the contents of the response. Untimely responses will not be forwarded. Any response submitted through the USPTO should be submitted as soon as possible, but at least one month before the end of the response period in the IB's notice. The USPTO will not process any response received after the IB's response deadline. 37 C.F.R. §7.14(e).

Nature of review of response by USPTO

Responses to IB notices of irregularities involving the classification or indication of goods/services are reviewed by the Madrid Processing Unit (MPU) of the USPTO to ensure that the response does not identify goods or services that are broader than the scope of goods or services in the basic application or registration. 37 C.F.R. §7.14; TMEP §1902.07(c) et seq.

This review is conducted at the time of the response. A comparison of the proposed amendments is made with the identification of goods/services listed in the basic application and/or registration as they are on the date of review. The MPU does not compare the goods/services of the proposal with the goods/services of the basic application and/or registration as of the date the international application was filed. If the identification of goods/services has been limited or classes of goods/services have been deleted from the basic application and/or registration, such goods/services may not be party of the proposed response to the irregularity. The scope of the basic application and/or registration is the outside limit of acceptable goods/services that may be included in the response.

IB proposal requiring transfer of goods/services and/or additional fees

If the proposal transfers goods/services to classes already covered by the fees paid with respect to the international application, no further response is necessary - IB will make the proposed changes and register the mark.

If the proposal of the IB results in the need for additional class(es) of goods/services not already included in the international application, the applicant must respond by paying the additional fees or the application will be abandoned.

If the applicant decides to withdraw one or more goods/services instead of paying additional fees for the additional class(es), the applicant may respond in such a manner through the USPTO. In the alternative, the applicant may propose to amend the wording of the goods/services in a way that renders the need for additional fees moot. For example, the applicant may clarify the nature of the goods to explain why they are more properly classified in the international class originally indicated in the international application (e.g. "baby doll pajamas" are properly in Class 25 as a particular type of apparel, and are not pajamas for baby dolls, making the IB proposal to transfer such goods to Class 28 inappropriate).

The USPTO cannot provide individual assistance to applicants responding to specific irregularities notified by the IB.

Responses regarding vague or incomprehensible language

When responding to an irregularity by proposing amendments to the wording of the identification of goods/services, those amendments should be clearly identified. Proposals should be set forth at the beginning of the response, in ascending numerical class order, with any further arguments or explanations set forth thereafter. It is suggested that long responses include headings to separate amendments and any supporting arguments from other amendments.

If upon review, the USPTO finds any of the proposed amendments unacceptable, the MPU will notify the applicant that the entire response will not be forwarded to the IB and indicating the specific reasons the response is unacceptable. If any time remains in the response period, the applicant may submit a new response.

How to respond to a Notice of Irregularity

Responses to Irregularity Notices may be filed electronically or via paper mail sent via the United States Postal Service to:

Madrid Processing Unit
600 Dulany Street
Alexandria, VA 22314-5793

Responses may also be sent by courier, by other delivery service (Federal Express, DHL, UPS, etc.) or hand delivered to the Trademark Assistance Center, which is located at: James Madison Building - East Wing:

Concourse Level
600 Dulany Street
Alexandria, Virginia

The Trademark Assistance Center is open from 8:30 a.m. until 5:00 p.m. on all weekdays, except holidays.

Timeliness considerations for a Response to an Irregularity Notice

To be considered timely, responses to an irregularity notice must be submitted to the IB before the end of the response period set forth in the irregularity notice. Receipt at the USPTO does not fulfill this requirement. TMEP §1902.07(e).

The USPTO will not review or forward any response submitted after the IB deadline. 37 C.F.R. §7.14(e). As USPTO review of responses requires a few days, applicants are urged to file responses with adequate time for review, the relevant rule indicating "at least one month before the end of the response period." Id.