WIPO Selects USPTO for Inaugural Publication – Madrid Highlights Special Edition (March 2015)

The World Intellectual Property Organization (WIPO) has published a Special Edition of its quarterly publication, Madrid Highlights, featuring an article about the United States Patent and Trademark Office (USPTO) as a designated contracting party. It has been translated into the six (6) official languages of the United Nations.

The article provides detailed information about the USPTO practice concerning international applications filed under the Madrid Protocol seeking request for extension of protection in the United States. The purpose of the article is two-fold: one, to help filers understand the USPTO application filing and examination requirements, and, two, to offer tips on avoiding provisional refusals from the USPTO.

The information is intended for a wide audience with varied levels of knowledge about filing and prosecuting Madrid applications before the USPTO, including applicants, attorneys, and trademark offices of Madrid Protocol members. Among the topics covered in the article are: provisional refusals based on absolute and relative grounds and non-compliance with procedural requirements; filing issues unique to Madrid applications; examination issues commonly seen in Madrid applications; responding to provisional refusals; post registration requirements to maintain the United States registration; and several other topics unique to Madrid applications and registrations. Citations to the Trademark Manual of Examination Process (TMEP) are provided throughout the article so that readers may obtain specific information on a given topic.

The Special Edition is available on the WIPO website at www.wipo.int/madrid/en/highlights/.