Reviewing Denial of Certification of Application for International Registration
An application for international registration of a trademark based on an existing U.S. trademark application or registration must meet certain requirements in order for the United States Patent and Trademark Office (USPTO) to certify the contents of the international application and forward it to the International Bureau (IB) of the World Intellectual Property Organization (WIPO).
If an international application cannot be certified due to discrepancies between the international application as submitted and the U.S. trademark application and/or registration on which the international application is based, the Trademark Specialists of the Madrid Processing Unit (MPU) of the USPTO will issue a notification of denial of certification.
An applicant may choose to petition for review of the decision of the MPU Trademark Specialist rather than submit a new international application. If the petition is granted, the original filing date of the international application will be restored, and the certified international application will be forwarded to the IB. However, restoration of certification does not guarantee the international registration will be issued. All applications for international registration must meet the requirements of the Madrid Protocol and will be reviewed by the IB. See TMEP Chapters 1700 and 1900 or contact the MPU at 571-272-8910 for further information.
Deadline for filing a Petition to Review Denial of Certification
When a denial of certification is issued, the petition should be filed immediately. Although to be considered timely, a petition may be submitted within two months of the denial, if the international application is not certified within two months of the original date of receipt of the application in the USPTO, the date of international registration will be affected. Article 3(4); Common Reg. 15. The international registration date may also affect any claim of priority made in the international application.
Fees for filing a Petition to Review Denial of Certification
If an applicant believes that a refusal to certify an international application was erroneous, the applicant may file a petition to the Director to review the refusal. The petition should refer to the USPTO Reference number, and include the petition fee required by 37 C.F.R. §2.6.
If the denial of certification was due to USPTO error, the USPTO will grant the petition and refund the petition fee. In all other cases, whether the petition is granted or denied, the petition fee is not refundable, unless the petition is withdrawn before a decision issues.
When your international application was denied certification, all of the international fees you paid to the USPTO in connection with the application were refunded. Therefore, if your petition is granted and your international application is certified and sent to the IB, you must pay the international fees. However, you cannot pay the international fees through the USPTO. You must pay them directly to the IB.
Upon receipt and review of the international application, the IB will issue a notice of irregularity requiring payment of the necessary fees. More information about IB fee payments can be found on WIPO’s website at https://www.wipo.int/finance/en/madrid.html.
If the petition is denied, you may submit a new international application with the USPTO certification fees required by 37 C.F.R. §7.6(a).
TEAS petition form
File a Petition to the Director to Review Denial of Certification of an International Application online through the Trademark Electronic Application System (TEAS). The form provides instructions to include a statement of the relevant facts with a supporting declaration embedded within the form and attach any relevant evidence as a .jpg or .pdf image file. See the TEAS Petition forms page and form number 14 for further information.
Substitute MM2 form may be required
If the reason for denial of certification of the international application is due to a mistake in the application as submitted to the USPTO, the application data cannot be altered or amended after submission. In order to forward the correct data as part of the international application, the applicant may need to complete a substitute version of the MM2 form, available on the WIPO website. A completed MM2 with the correct data may be attached to a petition submitted via TEAS as a .jpg or .pdf image. If the petition is granted, the substitute form will be certified and forwarded to WIPO for review by the IB.
By way of example, if an international application is denied certification because the goods or services listed are beyond the scope of those as identified in the basic application or registration, this discrepancy must be corrected by means of a substitute MM2 form that lists only goods/services within the scope of the basic.
But if the reason for the denial of certification is due to discrepancies among several basic applications and/or registrations or between the correct data in the international application and incorrect data in the basic application or registration, a substitute MM2 form is not required. As long as the data in the international application is accurate, it may be restored for certification after a petition is granted.