(438) Modification to Temporary Postponement of
Electronic Filing and Payment Rules for
Certain Madrid Protocol-related Rules
SUMMARY: The United States Patent and Trademark Office
(USPTO) is extending, until November 2, 2004, a temporary postponement
of those provisions of the Trademark Rules of Practice that require
electronic transmission to the USPTO of applications for international
registration, responses to irregularity notices, and subsequent
designations submitted pursuant to the Madrid Protocol. The
postponement was announced most recently in a document published in the
Federal Register on November 7, 2003.
The USPTO is also extending a temporary suspension, announced
in the same Federal Register document, of those provisions of the Rules
of Practice that allow payment of fees charged by the International
Bureau of the World Intellectual Property Organization (IB) to be
submitted through the USPTO, and those provisions of the Trademark
Rules of Practice that require that all fees for international
trademark applications and subsequent designations be paid at the time
of filing. The extensions and postponements announced herein are
procedural in nature and do not affect any substantive rights.
APPLICABILITY DATES: January 2, 2004 until November 2,
2004. The applicability dates for certain rules in 37 CFR parts 2 and
7, published September 26, 2003, and thereafter suspended until January
4, 2004 are hereby further suspended until November 2, 2004.
DATES: The applicability date for regulations at 37
CFR 2.190(a), 2.198(a)(1), 7.7(a) and (b), 7.11(a) introductory text
and (a)(9), 7.14(e), 7.21(b) introductory text and (b)(7) is suspended
until November 2, 2004.
FOR FURTHER INFORMATION CONTACT: Ari Leifman, Office
of the Commissioner for Trademarks, by telephone at (703) 308-8910,
ext. 155, or by e-mail to email@example.com.
As set forth below, the USPTO is extending the postponement of
the effective date of those regulations that require use of electronic
forms in connection with certain Madrid Protocol submissions until
November 2, 2004. Additionally, the USPTO is likewise extending to
November 2, 2004, the postponement of the effective date of those
regulations that require that international fees be paid concurrently
with Madrid filings, and that these fees be paid through the USPTO. The
Madrid Protocol provides a system for obtaining an international
trademark registration. The Madrid Protocol Implementation Act of 2002,
Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (MPIA) amends the Trademark
Act of 1946 to implement the provisions of the Madrid Protocol in the
United States. On September 26, 2003, the USPTO published new
regulations to implement the MPIA. 68 FR 55748, posted on the USPTO Web
site at http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf.
These regulations took effect on November 2, 2003. The regulations
require that certain submissions that are made to the USPTO in
connection with the Madrid Protocol be transmitted using the Trademark
Electronic Application System (TEAS). Specifically, 37 CFR 7.11(a)
requires that an international application be submitted through TEAS;
37 CFR 7.21(b) requires that a subsequent designation (a request that
protection be extended to countries not identified in the original
international application) be submitted through TEAS; and 37 CFR
7.14(e) requires that where the International Bureau of the World
Intellectual Property Organization (IB) has issued a notice of
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irregularity to an international applicant, and the international
applicant submits a response to that notice through the USPTO, the
response must be transmitted through TEAS.
Madrid Submissions Must be Prepared Using Paper
On October 24, 2003, the USPTO published a notice in which it
announced that it would permit international applications, responses to
irregularity notices, and subsequent designations to be submitted on
paper rather than through TEAS, for a temporary period of time. The
notice accordingly postponed the applicability of 37 CFR 7.11(a),
7.21(b), and 7.14(e), to the extent that those provisions require
transmission through TEAS. The notice further provided that this
postponement would remain in effect until January 2, 2004.
Thereafter, on November 7, 2003, the USPTO published a second
notice in which it announced that the postponement remained in effect
but was modified. The original notice of the postponement had provided
that applicants could make their submission either on paper or through
TEAS. However, the notice of November 7, 2003 provided that all Madrid
submissions must be made on paper. That modification was necessary,
because technical difficulties had prevented the deployment of TEAS.
Some of these difficulties have not yet been resolved, and the
TEAS forms cannot yet be posted. Therefore, the postponement of the
effective date of 37 CFR 7.11(a), 7.21(b), and 7.14(e) is hereby
extended to November 2, 2004. If the TEAS forms are posted while the
extended postponement of the applicability dates of 37 CFR 7.11(a),
7.21(b), and 7.14(e) is still in effect, then applicants will be able
to file international applications, responses to irregularity notices,
and subsequent designations either on paper or through TEAS. Under any
circumstances, there will be a transition period during which the USPTO
will accept both electronic and paper submissions. This additional
period will give applicants the flexibility and the opportunity to
become comfortable with the electronic system when it becomes
International Fees Must be Paid Directly to the IB
In addition to requiring that certain submissions that are made
to the USPTO in connection with the Madrid Protocol be transmitted
using TEAS, the Rules of Practice that took effect on November 2, 2003,
also require that international application fees be paid at the time of
submission. However, the notice of November 7, 2003 temporarily
suspended the applicability of those requirements, until January 4,
2004. Thus, the notice suspended 37 CFR 7.11(a)(9), to the extent that
it requires that international application fees for all classes and the
fees for all designated Contracting Parties identified in an
international application be paid at the time of submission. Likewise,
the notice suspended 37 CFR 7.21(b)(7), to the extent that it requires
that all international fees for a subsequent designation be paid at the
time of submission.
The notice of November 7, 2003, further provided that (1)
applicants who file Madrid submissions on paper must pay the USPTO
certification fee at the time of submission, but must pay the
international fees directly to the IB, and that (2) applicants who
submit a subsequent designation on paper must pay the USPTO transmittal
fee at the time of submission, but must pay the international fees
directly to the IB. Additionally, the notice provided that applicants
may pay the international fees to the IB either before or after
submission of the international application or subsequent designation.
These provisions of the Notice of November 7, 2003 are hereby
extended to November 2, 2004.
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If the TEAS forms are posted while the postponement of the
effective dates of 37 CFR 7.11(a)(9) and 7.21(b)(7) remains in effect,
then applicants who elect to use those forms will pay the international
fees (1) at the time of submission, and (2) through the USPTO.
Applicants Should Utilize Madrid Forms Provided by the IB
Applicants making Madrid submissions should use forms provided
by the IB for that purpose. These forms may be downloaded from the IB
Web site, http://www.uspto.gov/cgi-
Please note that the IB will not process paper submissions that are not
prepared using IB forms.
Applicants Should Mail Madrid Submissions to a Designated Address
Pursuant to 37 CFR 2.190(a), all trademark-related documents
submitted on paper must be mailed to a designated USPTO address.
However, the notice of November 7, 2003, waived that rule with respect
to international applications, subsequent designations, and responses
to notices of irregularities that are filed on paper. The notice
further provided that all Madrid submissions made on paper should be
mailed to the following address: Commissioner for Trademarks, PO Box
16471, Arlington, Virginia 22215-1471, Attn: MPU.
The limited waiver of 37 CFR 2.190(a) is hereby extended to
November 2, 2004. Please note that any trademark-related correspondence
other than international applications, subsequent designations, and
responses to irregularity notices that is sent to the above-identified
address will not be accepted, and will be returned to the sender.
If a submission mailed to the above address pursuant to this
notice and to the Notice of November 7, 2003 is delivered by the
Express Mail service of the United States Postal Service, the USPTO
will deem that the date of receipt of the submission in the USPTO is
the date the submission was deposited as Express Mail, provided that
the submitter complies with the requirements set forth in 37 CFR 2.198.
Please note that the USPTO is not suspending those rules that require
electronic filing of extensions of time to oppose and notices of
opposition with the Trademark Trial and Appeal Board, namely 37 CFR
2.101(b)2 and 37 CFR 2.102(a)2.
[1278 TMOG 159]