Hi everyone and welcome thank you for joining the
uspto trademark webinar series on the madrid protocol
today's topic is international trademark applications originating from the united
states our speakers today are kelly choe and
debbie lee kelly choe is an attorney advisor in the
office of the deputy commissioner of trademark
examination policy where she serves as one of the madrid
protocol liaison attorneys on the petition side
prior to joining the petition's office she worked in the office of trademark
classification policy and practice as a senior attorney in law office 109
and prior to that as a trademark examining attorney deputy lee has been
an attorney advisor with the uspto for over 15 years
she currently works in the office of the deputy commissioner for trademark
examination policy where she serves as one of the
madrid protocol liaison attorneys on the policy side
prior to joining the trademark legal policy office she was an attorney
advisor in the office of policy and international affairs
where she provided advice regarding trademarks and geographical indications
across a variety of regions prior to that she was a trademark
examining attorney for seven years if you have questions during the webinar
please post them in the chat window of this presentation and time permitting
we will respond at the end of the presentation without further delay
i will turn this over to kelly
thanks katie and good afternoon everyone and thank you for registering and
attending today's webinar i am kelly cho and i will start off
today's presentation then pass off the more complicated
aspects to my colleague debbie lee before we begin just want to let you
know that we will be covering a lot of information in one and a half
hours using madrid protocol specific terms
and moving relatively quickly through the topics
so if you find that you would like to learn more you can find additional
information and resources about the major protocol
on the uspto website and this presentation will also be made
available on the website so let's begin next slide please
so this is our road map for today's presentation we will start with a
general overview of the madrid system then focus on the uspto as the office of
origin for filing and certifying an international
application and if the international application is
denied certification by the uspto what your options are including filing a
petition later we'll cover the notice of irregularity
and also touch on post international registration issues
next slide
the madrid system what is it an international
trademark filing system for registering and maintaining trademarks worldwide
through a centralized mechanism underpinning the major system
are two treaties the majority agreement concerning the
international registration of marx and the protocol relating to the
majority agreement concerning the international registration of marx
the two trees are report referred to jointly as
the major system and so you may hear these terms madrid
protocol madrid system used interchangeably
but note that the madrid protocol does refer to the treaty
the major system is administered by the international bureau
of the world intellectual property organization located in switzerland
and in the interest of brevity i will probably just refer to the international
bureau as the ib and the world intellectual
property organization as wipo so why use it
it is cost effective and efficient you file
one application through one office using one language and pay
one set of fees and with 106 current members
you can seek protection in 122 countries and once your international registration
issues management of your international registration
portfolio is centralized through the international
bureau next slide
so this chart shows the filing process using the madrid system
you would start with a national or regional trademark
application or registration this is your basic application or
basic registration and forms the basis of your international application in
your international application you select or designate
the countries you are seeking protection in and you again
you have 122 countries to choose from and these designated countries
are the contracting parties the international application is filed with
your national or regional trademark office
which is the office of origin so your office of origin will then
review the international application and certify if all filing requirements
are met then submit that international
application to the international bureau upon receipt the international bureau
will review the application for formalities only
this is not a substantive examination once that review process is complete
the ib will issue a registration certificate and this is your
international registration then the international
bureau will notify each of the contracting parties that you
designated in your international application
with a request for extension of protection
this request for extension protection has the effect of a national or regional
application filing in that designated country it is then up
to each designated contracting party to review that request for extension of
protection to determine scope and registrability under its own
national laws so this means a refusal may issue but if
no refusal is made generally a 12 or 18 month deadline
the effect is a national or regional registration
in that designated country
next slide
so this chart shows the filing process from a slightly different perspective
the main point i want to make is that the madrid system
is a filing mechanism only that the international bureau
issues an international registration that notifies the designated contracting
parties with a request for extension protection this does not automatically
grant protection in those countries designated
effectively you now have a or depending on how many
countries you designated multiple pending national applications
that you must then prosecute so the scope and for that matter the
registrability of your request for extension protection
will be determined under the relevant national laws of the designated
contracting party and if you're successful in
registering your mark in that country be aware that separate maintenance funds
may be required to maintain your registered extension of protection
so while the benefit of the madrid system enables you to
centrally manage your international registrations through the international
bureau including renewal just be aware that a
single renewal filing at the iv may not be sufficient to maintain
protection in the designated contracting party next slide
sorry about that the next two slides cover
noteworthy aspects of the madrid system an international application can be
based on one or more applications android registrations for the same
mark when filing through the uspto all fees are payable in a u.s dollar
and the relevant fees include the basic fee which is payable to wipo
and currently that's 653 swiss francs and 903 swiss francs for color marks
there's also fees payable to the designated contracting parties
which is generally per class of goods and services
and also not listed on this slide are the uspto certification fees
and as previously mentioned the relevant national laws of the designated
contracting party will determine the scope of protection
additionally the international registration is
dependent on the scope of the basic application registration
for five years if the basic application of registration is cancelled or limited
so is the international registration and by extension the designations
also once the international registration issues
you can subsequently designate additional countries
the dependency and subsequent designations will be covered again late
in the presentation so i will move on to the next slide
another nerd worthy item that we'll go into more detail later
is that the scope of rights in the international registration
may not exceed those in the basic application or registration to include
the type representation and description of the mark
identification of goods and services and color claims
next slide and for these next slides debbie will be taking over
thanks kelly um following up on what kelly was talking about
one of the advantages of the system is that it is centrally administered
at wipo and the main point on this slide is to explain
how the operations business units of the ib are organized
so they have four teams and there is one team that is assigned
to handle the united states and what that means is that one team is
processing our applications processing our correspondence
also processing any maintenance filings that pertain to us
and then they're also the team that will be handling the customer service
um calls and requests that come in um from their online form
so when you do reach out to the ib for help
the people that will be working with you will be people that are familiar
with the common issues that come up um relevant to
our jurisdiction they can't answer legal questions but they are
custom you know they have a they're familiar with the more common questions
and they also have points of contact at the uspto in case
they need to coordinate with us in order to resolve an issue
this slide just provides an overview of some of the legal background
for the us implementation we joined the madrid protocol and it was
made effective in november of 2003 and we have up here
references to the amendments of the trademark act
that were enacted in order to have us join
as well as changes to the uspto trademark rules of practice
you can find the current version of both of these on the uspto website if
you click on the trademark link and you go to the
trademark home page there's a section in the right hand side
that is called laws and rules and under that
section you'll have access there's actually links to the most current
version of the trademark act as well as the most current version of
the rules of practice
this slide i'm just going to skim over it's a little bit more
information about our implementation that isn't it pertains to
the inbound process and we're focusing in this presentation on the outbound but
we have it here for your information
as i sort of hinted in the last slide madrid is a two-way process so the
subject matter of this presentation is the outgoing process that's the
process of u.s applicants seeking protection in
other countries for their trademarks using the madrid
system and we have here references to the trademark manual of examining
procedure that's the tmep that provide our policies and procedures
as to that outgoing process but there is also
an incoming process for requests for extension of protection
which is just a fancy way of saying incoming
applications through the madrid system into the united states so these are
foreign applicants seeking protection via madrid in the
united states where the uspto is a designated country
and the treaty term is we are a designated contracting party
beneath that we've got references to the relevant team ep sections that
cover our policies and procedures for this half of our implementation
we wanted to make you aware that we have a specialized business unit for
handling madrid issues and it's called the madrid processing
unit it's a small team relative to the amount of work that
they do we have nine people one supervisor one administrative
assistant one lead specialist and six specialists
on the on the outbound side which is what we're talking about today
the people in the mpu are responsible for review and certification of your
international applications reviewing and forwarding to the ib your
responses to notices of irregularity that you might receive
as well as processing and sending to the ib
ceasing of effect notices the mpu also does a tremendous amount of work
on processing transactions that come in as part of the maintenance filings that
happen so renewals and any changes to the identification of goods
and services corrections those types of things as well but these are just the
things that they do on the outbound side
and the next couple of slides are just some information resources that we think
might be helpful for you this is the uspto
web page for the madrid protocol the link is over there on the right hand
side it has a little bit of background
information and mostly what we focused on
in the content on this page is giving you information that will help you with
the inbound and outbound process as to the united states
so this is specialized information for us one
item of note that is very popular on this page is we have a document
entitled tips for avoiding denial of certification
kelly is going to discuss that topic with you
in actually in a few minutes but i wanted to let you know that it's
available we have a document available online that covers that material as well
and then i really wanted to show you this wipo website this is the madrid
system home page for wipo and if you can bear with me i'm going to take you on a
little brief adventure i'm going to show you
just a little bit of the content here because the
wipo website has a lot of really good user focused information
about how the system is put together as a whole
and i think this is a good resource for you at the top you can see
everybody's preoccupation right now is with covid19
they have information about filing flexibilities that are available
during this time i'm going to skip past news and events
although you'll see that they have video tutorials that they're advertising here
they have a reference to their e-services
including a search database that you can use to do a preliminary search
of your mark so that's very helpful but also
information pertaining to the entire process
and then what i really want you to see if you scroll all the way down this page
is information on how to contact customer service
so they have a link to an electronic contact form
they do respond you will be providing an email address for them to follow up they
do actually follow up you can get help this
way and then there's also the direct
telephone number from madrid customer service
and we have their operating hours here for you as well
and i'm going to switch back here
okay and now we're back to uspto land i'm going to just talk briefly about the
filing options for your international application we do
have electronic filing available you can only file in english and
the certification fees this is the fee that we collect
for reviewing your international application
and then certifying it and sending it on to the international bureau it's a
non-refundable fee it's 100 per class if you're filing
based on one basic application or registration or a hundred and fifty
dollars per class if your international application is
based on more than one basic application or registration you can pay
what we call the international fees which is the official wipo and country
fees through us through the form when you file the form we will collect
the fees in u.s dollars or you can tell the form that you're
going to pay the fees directly to wipo via a wipo deposit account
if you have one so you have those two options to pay
also just so you're aware we send transactions and when i say
transaction i mean any correspondence so international applications subsequent
designations any other back and forth maintenance
filings that we do with the international bureau
those are sent every day in one single batch file so we don't send things
individually we send the fees to the ib in one
lump sum once a week and then also it's important to know
that the ib sends money to us once a month
so if you're in a situation where you have sent fees
that have already gone to the inter seen me to the international bureau
and you are waiting for a refund there is a bit of back and forth so it takes a
little bit of time to work that out just be aware
and continuing on to filing we accept two types of filings we will accept
electronic filings and in limited circumstances we will
accept paper filings for electronic filings we have two types
of forms if you have only one basic application
or registration that you're using for your international application
you can use the pre-populated form the advantage of this form
is that it will automatically pull the relevant information
from your basic application or registration for you so you don't have
to type it in if you don't make any changes to the
information that was automatically populated into the form
it will be automatically certified and sent to the international bureau
if you make any tweaks to that information that will trigger a manual
review a manual certification review process and that
will just take a little bit longer if you have more than one basic
application or registration that you're using for your international
application you have to use the free text form
and as the name suggests you're going to have to type in all the information
into the form so that's the option that's the only option you have
available if you have more than one basic
application or registration and as i said before in limited
circumstances we will accept paper filings
as most of you are probably aware the uspto recently
implemented implemented mandatory electronic filing
so in the context of an international application
we will accept paper if the applicant is claiming a treaty right
to file on paper or if the electronic systems are not available when you
need to file so in those circumstances we would accept a paper filing
but be aware that the international bureau will only accept
the paper filing on its official mm2 form
so that form is available from the wipo website you can link to it
from the website i showed you earlier and then i also have the direct link
on a slide later on and now i'm going to switch back you're
going to kelly's going to talk to you a little bit more about electronic filing
thanks debbie okay so you're now ready to file
an international application through the uspto website
there are probably slightly different ways to get there but ultimately you
want to find the madrid protocol forms link click on the application for
international registration and this page will display showing both
the pre-populated form and the free text form
as debbie indicated earlier you will not be able to use the pre-populated form if
you have multiple u.s applications or registrations you
would only be able to use the free text form
so what are the advantages of the pre-populated form
as the name suggests this form pre-populates with the exact information
from the uspto database so transcription mistakes are unlikely and
as mentioned earlier if no changes are made the international
application is automatically certified and
transmitted to the international bureau next slide
so i think i covered this slide so we'll just move on to
the next slide
so what are the disadvantages of using the pre-populated form
most notably pre-population of data containing errors or incorrect
information for example if there is a typo or error
in the u.s application or registration this error
will also appear in the international application and
ultimately the international registration
errors might include typos incorrect punctuations in the owner name
or listing of the goods and services or an incorrect indication
of the mark type because international applications cannot be corrected or
amended this may result in a denial of
certification or ultimately affect protection in the designated
contracting parties so if there are any errors or incorrect
information in the us application or registration
you should correct that prior to filing the international
application if time permits or consider using the
free text form slide
so the madrid processing unit or mpu processes
all the international applications for the uspto as the office of origin
mpu reviews each international application and compares information
with each basic application or registration
to determine if all the filing requirements are met and will either
certify and forward the international application to the international bureau
or deny certification and send the applicant a letter setting forth the
reasons for the denial if denied certification the
international filing fees will be refunded
but the uspto certification fees will not
next slide
so the next few slides highlight some of the key elements
and pu reviews for certification and if there are discrepancies
a denial of certification will likely issue
the first is ownership here we're looking at the owner name
entity designation and citizenship they must be
identical for example if the owner name the basic application
includes inc the owner name in the international application must
also include inc reproduction and description of the mark this
includes color claimed as well they must be the same for example if the
basic application or registration includes a marked description
then the same marked description must be included in an international
application if the mark in the basic application is in color
then the mark in the international application must also
be in color standard character claims these claims must be present in all the
basic applications or registrations that from the basis of the international
application next slide
also the international application must include an
indication for certain types of marks specifically if the basic
application or registration is a three-dimensional mark
sound mark collective or certification mark
so please be sure of what you're filing and what you are starting
in your international application before filing
next slide
the goods and services are also reviewed for certification
essentially the listing of the goods and services in the international
application must be the same as or less than the
goods and services and the basic application or registration but be aware
that the goods and services listed in the
international application must be within scope of the basic
applications and registrations when mpu actually reviews the international
application for certification so if the identification of goods and
services in the basic application was amended before mpu reviewed the
international application depending on the nature of the
amendments a denial of certification may issue if the goods are no longer
within scope in the international application
as for limitations this refers to limiting or narrowing
the listing of goods and services specific to
each designated contracting party note however that the uspto
does not review limitations for certification
purposes next slide
and though the identification of goods and services is reviewed for
certification mpu does not certify classification of
those goods and services to listing in the international application
classification is solely determined by the international bureau
pursuant to the nice classification in effect as of the filing date of the
international application currently it is the niece classification
11th edition version 2020. so while the listing of goods and
services in the international application
does not have to be classified in the same class as in the basic application
or registration be aware that improperly classified
goods or services will likely result in the issuance of a
notice of irregularity from the ib
next slide
the international registration date the international registration date
is the date the international application is received by the uspto
provided that the international bureau receives that international application
from the uspto within two months of receipt
by the uspto this is true even with applications with the claim priority
so for international applications that include that claim of priority
so long as the international application is filed with the uspto
on or before the last day of the six-month priority period
the uspto has two months to get that application to the ib if however the
international application is received by the ib
after that two-month window the international registration date will be
the date a receipt by the ib basically the date when the ib receives
the international application from us next page
how to avoid a denial of certification
next page
so these are some general practice tips to consider before filing an
international application review and correct any errors or
inconsistencies before filing the international application and when
reviewing information in the uspto database please use tsdr
or the trademark status and document retrieval system
rather than test the trademark electronic service system
because of the way tests display certain fields we suggest that you rely on the
information that is displayed in tsdr
next page
so how to correct errors or inconsistencies
before filing so if you note that there is an error or inconsistency
in the basic application you can contact the assigned examining attorney to
request an amendment or the correction if an examining attorney has not yet
been signed you can file a voluntary amendment
if the error or inconsistency is in the basic registration
you can file a section 7 amendment with the post registration unit
or if appropriate file an assignment with the assignment recordation branch
however again be mindful of timing when filing the assignment
uspto records may not have yet updated to reflect the assignment
so depending on when the international application was filed
when mpu actually reviews the international
application the owner name may be inconsistent
and that would warrant a denial of certification so it would be optimal to
wait until the assignment has been recorded
and the uspto database has updated to the correct owner name
before filing the international application
next page um since we've covered most of this information
we will just move on to the next slide
denial of certification as discussed earlier
mpu will review the international application to determine if it meets
certain filing requirements if mpu deny certification a letter is
issued explaining the reasons for the dial this is a final
decision and does not permit the applicant to
file a response or otherwise amend the international
application however the letter will outline the
applicant's options which are to file a new international
application basically to start over or to file a
petition to the director to review denial
of certification
next page
so the petition to review denial of certification is an online form that is
available through the uspto website this petition is a request to the
director of the uspto to review mpu's decision or exercise
supervise three i'm sorry to exercise authority to
permit applicant to correct minor mistakes in the
international application sometimes the issues can be a little uh
convoluted so if there are any questions we do
encourage applicants to contact us before filing the international
application or the petition next page
some things to consider when filing a petition
timeliness please be aware of that two-month window
the the international application must be certified by the uspto
and received by the international bureau within two months
a receipt at the uspto in order to preserve
that filing date as the international registration date
and if the submitted international application contains errors
together with the petition a substitute paper international application which is
the mm2 that debbie talked about earlier that's also got to be submitted this
form can be downloaded from wipo's website so while the originally
filed international application cannot be corrected or amended
a substitute application the mm2 once it is reviewed
and determined to be acceptable can be certified and sent to the ib
and again because of this two month window these petitions
are expedited for review by a petition staff attorney
so be sure you're filing the correct petition form
and to file as soon as practicable
next slide
this slide covers a couple of other considerations that we're not going to
spend too much time on just wanted to mention
that international applications can be based on
u.s applications pending or registrations issued by the uspto
on the supplemental register and the next slide will be back to
debbie
thanks kelly um so kelly touched on subsequent designations at the very
beginning but just to kind of recap because we're throwing a lot of new
terminology at you the subsequent designation
is a request you file to seek protection in additional
countries that you did not include in the international
application when you filed it or to seek protection for additional goods and
services that weren't covered in a previous designation to a country
so the the core thing to keep in mind throughout this process is that the
international registration sits in the middle of all of this so you can't
add goods or services that are not covered by the international
registration so you're always going to be limited to what's in the
international registration but but that's the function of the
subsequent designation it can only be filed once the
international registration issues so you're going to need that
number when you file it you can file it with us using a teas i
form or you can file it directly with the ib
they have an electronic a fully electronic mm4 form
for that purpose if you file directly with the ib the form will be processed
more quickly because you're eliminating the uspto as the middleman
so that's an advantage if you file with us we charge a one hundred dollar
non-refundable transmittal fee but the advantage is that you pay in us
dollars instead of swiss francs you should know that we
don't review subsequent designations for any
requirements we are simply forwarding on to the international
bureau whatever you file with us so that is our function so if you file
directly with the ib you can skip the 100 fee but then you'll
be paying in swiss francs that's kind of the
nuts and bolts of that you want to be mindful of the renewal date of the
international registration again the international registration
sits in the middle of this entire process
so when the international registration expires
all of the designations expire so everything is linked all of the
country designations all of your baby trademark applications and registrations
that emanated from that international registration will expire when the ir
spire expires so just keep in mind your renewal date
when you file a subsequent designation your default filing date
is the date received at the uspto if the ib
receives it within two months of that date otherwise it's the date received at
the ib obviously if you file at the ib it's
going to be the date it was received at the ib
however on the form you can indicate and this is off the uspto form
as well as the ib form you can indicate that you want the subsequent designation
to take effect after the renewal of the international
registration or after some change to the
international registration has taken effect
so you do have those options when you file the form their check boxes
basically and then also we have a point on the
slide that there are some parties that you can designate only if your
international registration date is after the date they joined the madrid
protocol that is an option when countries join the protocol
currently there are only the five countries listed that have
opted in this way but if you file using one of our forms
and you designate a country one of or you try to designate one of these
countries and your international registration date precedes
their assession date that option will be grayed out the form won't let you do it
and now i'm going to let kelly talk about notices of irregularity
thank you so now we're on notices of irregularity so
what is that a notice of irregularity is a notice from the international bureau
concerning deficiencies in the international application that will
require correction from the applicant or the uspto so when the
international bureau receives the certified international application
from the uspto it will be reviewed for formalities not
for substantive issues and as a result of that review um may
issue a notice of irregularity for deficiencies
including the identification or classification
of goods and services or fees next slide
so how to respond to a notice of irregularity
depending on the type of deficiency irregularity it may be remedied
by the uspto for example a drawing was omitted from the
international application or by the applicant directly
with the ib for perhaps missing fees or by the applicant through the uspto
where the uspto will review the response and forward
to the ib and this is when the irregularity concerns
the identification of goods and services for if you wanted additional information
on the identification or classification of
goods and services you can see rules 12 and 13 of the regulations under the
protocol uh next slide
so the deadline for responding to a notice of irregularity is generally
three months and the due date will be clearly
indicated on the notice that you receive if the response has to be filed through
the uspto we do encourage you to file that
response early so that mpu has sufficient time to review
and forward to the international bureau if your response
is received by the uspto after the response deadline
mpu will not process it and it will not be forwarded to the ib
next slide um so this is the response to notice of irregularity
form that's available online on the uspto website
and that's obviously the form that you would use to uh submit that response if
it's got to be through the uspto
next slide
once the response to the notice of irregularity form has been submitted
it will route to mpu an mpu specialist will
review the amended goods and services in the response
if the amended goods and services and the response exceed the scope
of the goods and services listed in the basic application registration
npu will not forward that response to the ib
and will notify the applicant accordingly
if the international bureau's deadline has not yet expired
then the applicant can submit a new response and if that new response is
acceptable mpu will forward that to the ib so
filing response early provides this additional time
to allow for a potential second response to be filed
for submission to the ib
next slide
so what happens if a response to the notice of irregularity is not timely
submitted to the international bureau if an irregularity concerning
unacceptable wording or terms and the listing of the goods and services
is not remedied the ib may include the unacceptable wording or terms in the
international registration with bracketed indication that the ib
considers such wording terms to be too vague for purposes of classification
and that's if classification was provided in the application
if we if the if classification was not provided
then the unacceptable wording would be deleted and the uspton the
applicant would be notified of such but again if the irregularity concerns
fees and no response with tommy filed
the ib will likely abandon the international application
next slide and back to you debbie
thank you okay so um for this is the last section of the
presentation and i'm going to talk to you about what happens
after the international registration issues
so we're going to spend a little bit of time talking about dependency and
seasons of effect and then some information on maintaining
your international registration and making changes to it
okay dependency this is important it's one of the core principles of the madrid
system as we've been discussing all along your
application for the international registration must be
based on one or more us trademark applications or
registrations those are your basics your basic application your basic
registration the rest of the story is that the
international registration continues to be tied to your basic application or
registration for a period of five years from the date the
international registration issues so five years from the registration date
of the ir this means that if the basic application
or registration dies within that five-year dependency
period the international registration dies or if the listing of
goods and services in the basic application or registration is
restricted within that five-year dependency period
that restriction is going to be translated into the listing of goods and
services in the international registration
so what happens in the basic is going to get translated
into your international registration during that five-year dependency period
just keep that in mind um we notify the international bureau
of these changes via a notice called a ceasing of effect
and then the other important concept and i talked about this a little bit when i
was talking about subsequent designations
is that dependency works in concert with this with this feature of the system
that all the designations are tied to the international
registration so what happens to the international
registration is going to happen to all of the
designations all of the baby trademark applications
and registrations that emanated from the international registration so
if the basic application or registration is abandoned or if it's cancelled your
international registration is going to be cancelled and then all of
your designations are going to be cancelled
as well this is how dependency works same thing for restrictions of goods and
services if your good listing of goods and
services and your basic application or
registration is restricted that is going to be reflected in the
international registration it will be narrowed
accordingly and then that same restriction of goods
and services is going to be translated into all of
the designations so all of your designations will be restricted
accordingly
and i think that is what i want to talk about
oh no i did want to say one more point when the five-year
dependency period ends then the international registration is free
of the basics so you don't have to worry about it after that five-year period
it's automatic i'm going to skip this i've i've talked
about this i just did it all on the first slide
so this slide we're going to talk a little bit about just to clarify what
are the types of things that get notified to the ib
in a ceasing of effect the only thing that we are concerned about in a ceasing
of effect are changes to the scope of protection
in the basic application or registration so what that boils down to is was there
a change to the listing of goods and services or
did the basic application or registration die
those are the things that we notify so what are the things that don't get
notified include things like oh you had an
amendment to the drawing during prosecution
or the mark description changed or a translation statement change a change
in owner owner address none of these things are notified to the
international bureau so keep that in mind if you file
your international application while the basic is still
pending or early on in the situation you may have some negative
impacts to your international registration that you may not have
intended so for that reason we encourage
applicants to wait until at least you get your first office
action on the basic application
and in case you're worried about timing your priority claim is valid so long as
your application is filed within six months
of filing the us basic so you've got six months to play with
and right now office pendency is at 2.6 months
so you should receive your first office action within three months of filing
your basic and then you'll have a sense of is there
excuse me is there a substantive refusal am i going to have to reclassify goods
and services or something like that you should have a sense of that within
three months and then you still have time to file
your international application
here's some examples just because we're going to drill this point home with you
so you know you might run into a problem if the mark is amended during
prosecution and again i'm talking about in the basic application
so an example that happens you know from time to time
is that a hyphen in the mark will be deleted if you've already
filed your international application with
the hyphen in the mark there's no way to go back and amend the mark in the
international registration you're stuck with the mark with a hyphen
and then also what will happen from time to time is
and this is less common but it could happen
is that someone filed with a standard character mark
and then they decided to amend the drawing to
wording in a stylized font which is permissible
as long as it's not material and you cannot make a corresponding change
in your international registration your drawing is set forth when you
file your international application another problem we see from time to time
this creates issues is um changes in the
classification of goods and services so what will happen from time to time is
people will file for a listing of goods and services the example we have here
is this is a broad id for goods in class 25 is what they filed in
in the basic for headgear well headgear will allow you to amend to
any clothing in class 25 any headgear in class 25
as well as any headgear protective headgear in class 9
so let's say the id in the basic is amended to motorcycle helmets in class
9. if you had filed your international application immediately it went to it
would go to the international bureau with headgear in
class 25. well when your basic application
registers with motorcycle helmets in class 9 we
have to send a ceasing notice to the international registration to let them
know that your id is now motorcycle helmet
but we can't change the class the classification
is permanently set to class 25. so we will be sending a ceasing notice that
what remains protected is motorcycle helmets in class 25.
there's a legal question as to how the jurisdictions where you filed your
designations are going to handle that will they see that as you have nothing
left protected in the mark that's going to depend on
national law as to how they handle that so just be aware that that class changes
can potentially be problematic for you
okay and now that i've scared you i'm going to talk about maintaining an
international registration okay so the international registration
is valid for 10 years and that renewal period commences with
the date of the the registration date of your international
registration you have to file your renewal directly with the international
bureau this is going to be the theme for the rest of this presentation that
you have to file things directly with the ib
they have a fully electronic renewal form you can use or a downloadable
pdf mm-11 form both of which are found on
wipo's website we don't process or forward these you have to go right to
them so if you contact us we're going to send you right over to wipo and as i've
said before if it's not renewed if your
international registration is not renewed it will be canceled
and then all of the designations all of your
trademark applications and registrations that emanated from that international
registration will also be cancelled so renewals are maintained centrally at
the international bureau for changes
to an international registration once again we're going out to the
ib in order to make these so i have some listing of forms
um here that tell you which forms you can do
what with um but just some high points here if you're
chain if you want to file an assignment that's on the mm5 form
the ib also has a separate form if you have a non-transfer
change in owner name or address or entity type that's the mm9 form
there's a little error here on the slide if you have a change
in the representative so this is the representative that's appointed
for the applicant before the international bureau that
is filed on the mm12 form and if you want to have a name
change of that party or an address change for that party that's on the mm10
form and then the last three options well i'll just talk about them
individually we've got a little time the limitation of goods and services
that is a restriction to an identification of goods and services
that pertains only to one or more of the designations
so it does not pertain to the international registration
that's on the mm6 a renunciation that is like a surrender and it applies
also to a designation or one or more
designations and that's the mm7 form if you want to cancel the international
registration in whole or in part that's the mm8 and a
cancellation in part is basically deleting
some goods or services out of the international registration so if you're
doing that or you want to cancel it entirely that's the mm8 form and
the link is the direct link to where you find the forms on
the wipo website
i'm not going to go through this entirely i'm going to hit the high point
the main point i want you to take away from this is that if you need to file an
assignment keep in mind that the ib doesn't require
evidence of the change in ownership so you don't send supporting documents to
the ib they don't want it they don't need it
this is a very european bureaucracy they want the form just
fill out the form
and then this is my exception to file everything at the ib so
the mm5 is your assignment your change of holder form
and generally speaking it's going to be filed at the ib
however the form requires the signatures of the assignor and the assignee
so what if you can't what if the assignee can't get the signature of the
assignor and this is when we have our little
special quirky situation under these circumstances the madrid
system provides for filing the mm5 with the national office
rather than the ib when the assignee meets the madrid entitlement criteria
meaning you're a citizen you're domiciled in or have a real
and effective effective industrial or commercial presence in the jurisdiction
and when the assignment pertains to an ir
that's based on a basic application or registration
from that jurisdiction or applies to a designation to that jurisdiction
so in the context of what we're talking about the assignee has to be
a citizen domiciled in or have a real and effective industrial or commercial
presence in the united states and the assignment pertains to an
international registration based on a u.s
application or registration or it pertains to a designation to the united
states which is an incoming madrid based application or
registration
we don't have a special electronic form to file this
um we only get a handful of of these a year
so you have to complete the download and complete the official copy of the mm5
form from the wipo website and attach it to a petition to the
director for an international application or registration and that's
how you do this we do charge a 100 non-refundable
transmittal fee and keep in mind there's no back and
forth so either it meets the requirements or
and we send it or it doesn't and we don't the
all of the very specific requirements for this are set out in trademark rule
7.23 so i encourage you to take a look at
that if you find yourself in this situation
okay and finally we have some important trademark contact information
for you we have the contact information for the assignments recordation branch
the madrid processing unit the petitions office
and if you have problems with an electronic form
please email the teas email box is t-e-a-s
uspto.gov and that's manned between 8am and 8pm and then if you just have
general how do i file these questions those can be directed to the trademark
assistance center and the contact information
is there for that so we are going to transition to the question and answer
portion of the presentation i just want to remind you to put your
questions in the chat window i see a lot of you have already
figured that out or heard the announcement at the very beginning
so thank you for that and you want to make sure that in the little to field
the little drop down you select all panelists and that way we can view it
and we're going to take a minute to just pull those questions for you
okay actually while we're pulling questions let me just
um because i did see a couple of pop-up questions come in
during the presentation so somebody had asked about whether
they will get copies of the slides and we just want to remind you that a link
to the slides are will be shared with all attendees
that registered so everybody will get a copy
of the slides or a link to up to the slides um so those will be made
available
and also a recording of the presentation will be posted on the uspto website
so i did get i did see one question regarding the
payment and refund of fees so if i wanted
the question correctly if an international application is filed
and it is denied certification all the relevant
international filing fees will be automatically refunded
back to you the only fee that will not be refunded is the certification fees
and if at that point you decide to just refile
a whole new international application um you would obviously have to repay those
international application fees which were refunded to you before
and unfortunately you have to pay the additional
certification fee because it's a new international application
and um we also had a question about transformation
we have a couple of questions about transformation i'm going to read them
um if the u.s basic application or registration is cancelled
or abandoned isn't it possible to nationalize the ir designations and keep
the registration in the designated countries
yes thank you for asking that question so we were talking about the worst
possible case scenario where your basic dies
and your international registration is canceled so
you have a provision in the treaty that when
the international registration is cancelled because of a ceasing of effect
so the death of the basic application or registration
you have the ability to file what is called a request for transformation it's
it is within a three-month deadline so you need to be vigilant of this be
vigilant of the death of the ir so that you can stay on top of your
deadlines but essentially what happens is you file
a request for transformation in the jurisdiction of the designation
so you filed from the u.s you designated
france and your basic died and then you have to
file your request for transformation in
france and you're requesting to have your
registered or pending extension of protection
um transformed into a national application or registration so that's
how that works
so there's a question with a subsequent designation um
the subsequent designation would only be made after the international bureau
issues the international registration so if it hasn't issued yet you would have
to wait for the application to issue as a
registration and then you can file subsequent
designations
we have a question about local council i'm going to read that i was under the
impression that after filing an international application you need a
foreign correspondent if you received an an official excuse me official action
from a particular country okay this is very jurisdiction dependent
so it is definitely true that it is more common that most foreign jurisdictions
do require local council in order to respond to um
an office action from their um ip office but it is jurisdiction dependent so it's
not it's not an across-the-board rule it's not a feature of the treaty it's a
it's controlled by national law and then i'm going to answer a related
question which is can a u.s attorney file directly forms with the ib or do
you need international counsel a u.s attorney actually the
international bureau doesn't require that the representatives before the ibb
attorneys at all they just are representing the applicant
so um and i think what they're relying on
are local rules for representation perhaps i'm not really sure
but yes a u.s attorney can file forms directly with the ib
absolutely so we have a question um to explain the
difference between the two month priority and six month
priority so the two months and the six months
part window that we were talking about during today's presentation really
pertains to one the international registration date
we have when you file your international application with the uspto
we have two months to get that international application
to the ib in order for you to preserve that filing date the six month
claim of priority has to do with claiming priority um so if you
filed an application in the u.s and it's pending
you have six months to claim priority on that filing date
when you file the international application and that will carry
through to the international application so
those two dates are not really a priority one really has to do
with the window of us filing the international
application or getting that international application
to the ib and one just has to do with the claim of priority
so i hope i answered that question
um we got a question asking about i'm just going to read the question i
noticed that in some instances we receive notifications from
designated countries with a different registration date however it seems that
we should not necessarily pay attention to these registration dates
rather only the ir registration date in terms of docketing for a renewal is
this true okay so in terms of filing renewals
yes the renewal deadline for the trademark
is going to be tied to the international registration date
however different jurisdictions have additional maintenance filing
requirements for example the united states you know
this isn't applicable in this context but just
as an example we require showings of use periodic showings of use
in order to maintain your registration so even if someone were filing from
madrid to us they still have to meet those requirements so you're definitely
going to want to check local you know the national law where
those designations are registered to see if
you have any additional maintenance requirements
beyond filing a renewal
um so there is a question about the difference between a
home application and a claim of priority on the international application forms
um
it depends so if your international application
is based on let's say one application and you're
claiming you're asserting a claim of priority based on that one
application and you're within the six-month priority period
then yes in your international application the
basic application and the um the application number of which you're
claiming priority would be the same serial number if
um you're basing your international application on multiple applications
or on an out combination of an application or registration
obviously that would that would differ the listing of the various
basic applications of basic registrations would be a listing of all
the goods i mean all the applications and registrations
that you are utilizing and the claim of priority would be
only those where you're within that six-month window of claiming
priority
we have a question where someone is asking if we can make changes to an
international registration with the ib prior
to the termination of the five-year dependency period and the answer
is yes now the types of changes you'll be filing would be you know
changes in the scope of the id changes in ownership those types of
things so as we said you can't change the drawing
you can't do those types of changes at all and dependency has nothing to do
with it but you can file let's say you want to
restrict the goods and services in the international registration that's
the cancellation form you'll just cancel it
as to only particular goods and services and again if you're
filing a change of ownership or if you want to change the owner address
or something like that
definitely
can work registered on the supplemental register
be a basic application for an international application
the answer is yes pending applications or registrations on the supplemental
register can be a basis for an international
application
and a question i absolutely love they filed on may 15 and received
confirmation that we receive the filing and that
confirmation receipt contains a reference number where do i check on
the status of the filing tsdr this is so exciting
so the reference number that is assigned to the international
application starts with a letter and if you go to the trademark
document status tsdr um system i can pull it up here in a second
and show you you can use your reference number
there where you would normally put in an application serial number of a
registration number and it will pull up the file for you and
then you can view all the documents in that file
and i will just go a little crazy here and show you what i'm talking about
here's my little link tsdr at uspto.gov it takes a reference number and i don't
actually happen to have one handy um off the top of my head but um
or actually
this you should probably never do um
but it is all public record so status gives you the status
and if you click on documents you can see everything that's happened in the
application
i'm going to switch back over so you can see the contact information again
you
so we have a question about um how do you know which designated countries are
still active in your international registration
so the so the simplest answer would really be to go to
wipo's website it's a fairly straightforward
website that pretty easily searchable you just type in your international
registration number in the little search function and all the various
documents the basic goods and services listing the
countries that were originally designated
and all of these subsequent communications from the
designated countries it should all appear on that website and that
would probably be the best way that you could figure out
what's going on with your international
registration
um there's a question someone asked if it's possible to file forms like the mm6
with the uspto or do the forms have to be filed directly with
wipo so the mm6 is a limitation form that form needs to be filed directly
with wipo when in doubt the form has to be filed
with wipo the exceptions are the international
application form obviously that comes through us
you can file the subsequent designation with us or
with the ib once the international registration has issued you
have to have the international registration number i'm sort of folding
in another question you have to have an international
registration number in order to file the subsequent designation
however limitations i'm not sure if you were asking specifically about that form
the mm6 or if you were asking about limitations
as a filing so when you file your international
application or if you're filing a subsequent designation
you can include limitations to the goods and services
for specific countries that you're designating
so you can do that in those forms but if you're filing it separately
from the international application or the subsequent designation
then you're using the mm6 form and that does have to be filed directly
with the ib
so we have a question about the best way to
update the owner information with the uspto before filing the international
registration um so if you've already filed the
assignment it does depending on which day you filed it the
assignments are auto updated i believe on wednesday
nights so if you kind of fall in that awkward
period where you need to file the international
application prior to update you can just go ahead and file the um
using the free text form enter the correct information
so let's say the the owner information has it has not changed in the uspto
records you want to clearly identify the correct owner name
in your international application form and it will probably get denied
certification at that point we can pull the
international application and once the record has updated or if it
hasn't we can look into that to ensure that it has updated
and that would probably be depending again
on your timing issues disclaimer priority
that's probably the um the most expedient way to file the international
application
we're reading questions we're trying to pull everything we're getting them in
batches so my apologies for some of the delays in
the timing it's taking us to get to the
questions
somebody had a follow-up question on transformation
because i did not cover this and the question is if some classes
but not all are deleted from the basic u.s application
is transformation available for the canceled classes
yeah it's called a partial ca partial transformation you can absolutely
transform goods and services that were deleted
from the designation because those goods or services were deleted
from the um the basic application or
registration so you can file a partial transformation it's not class based it's
actually based on the goods and services
so there's a question about whether the international registration is only
effective if the designated countries approves it
for registration in the country so the international
registration is issued by the international bureau
and once that ir issues it is notified through the um request for extension
protection to whichever countries you want to
designate so if there are some countries that you
designate that for whatever reason issues of refusal and you are not able
to actually um get protection in those
countries it doesn't really affect the
international registration at the ib level
because you can always take that international registration from the ib
and subsequently designate other countries or
perhaps in 10 years that country that you really want to get protection in
perhaps in 10 years you will refile via a subsequent designation
and get protection then so it's a it's not that it's not effective um the
international legislation sort of stands on its own
at the international bureau and how and the scope of your use of that
international legislation to designate the contracting parties that's really
going to determine the scope of your protection
worldwide
debbie i'm going to jump ahead of you if you don't mind
no go ahead um so this is a great question
so the question is is the two-month window for the pto to get the
application to the ib how often does that window not get met
and what can the applicant do to make sure that this two-month window
gets met so the short answer is if you receive a denial of certification
and you intend to file a petition file that petition as soon as possible
if you file that petition quickly there's no reason why we wouldn't be
able to um work through the the issues um
having said that if there's some deep substantive issue for the denial of cert
um again we would have to you know look at the the specifics of it
but in order to um ensure that that two-month window gets met
you would need to file that petition as quickly as possible
if you wait till let's say the last day of that two-month window
i mean it's sort of difficult to review the petition
and if there's a substitute mm2 involved to review the substitute mm2
to ensure that all the information is correct and then to grant the petition
and then to transmit that to the ib because it's got to be received by the
ib it's not the date that the the uspto sends the international
application it's when the ib receives it so
if i can just say this one more time if you can file that petition as quickly as
possible that definitely goes a long way
i'm going to read a question that i can't answer because i think it's
actually worth reading the question if we have to comply with all local
jurisdictions and presumably retain local council what is the relative
frequency of local issues coming up that is a question that we don't have
the data on um we don't have any of the
statistics on how frequently other offices are issuing refusals
and you know what are the common bases however the international bureau does
track some of that information so it would be
worthwhile going out to the to the wipo website
and taking a look at their statistics if you start from that
madrid page that i showed you they do have links to their filing statistics
and then um because there are a number of questions that we receive that
actually do pertain to local to national law and local rules i wanted
to let you know that the international bureau also maintains
a database that contains legal information
or information about the laws and practice of all the madrid member states
so that database is also linked from that madrid
webpage and the information is not updated by the international bureau it
is updated and maintained by the different national
offices so the different national ip offices are responsible for the content
in that database which is good in the sense that you're
getting it from an authority but sometimes it can be challenging
depending on you know how frequently they are able to
update that information and keep it current so
the relevance for you may depend from country to country but
it is definitely an excellent resource to get a feel for
how their practice might be different for example are you filing into a
jurisdiction that does not do any searching of the mark before the
registration issues super important to know what your
registration means so that's an example
we have a question about whether madrid filings through the uspto is subject to
the u.s council rule um
debbie do you want to take that one yeah it's a squeegee answer
technically yes but our system the international application
form and the subsequent designation forms
we were not able to update the back end of the system to accommodate the us
council information to make it mandatory so if you so the answer is
yes um it's encompassed by the rule change but the forms are not
enforcing it and we're not going to deny certification
um for that reason
okay i have another question about ceasing of effects
where the international registration is already past five years old when a
subsequent designation is filed will there be a ceasing of
effect issue in play i sort of reworded your question but
sorry but that that's the meat of the question
and the answer is the dependency period you've got it i
intuitively i think you understand it the
dependency period is linked to the registration date of the international
registration so if that registration is already past
the dependency period if it's older than five years
then all of the designations are free the the dependency period and the
ceasing of effects are no longer an issue across the board
so it doesn't matter that you're filing a new subsequent designation that's fine
someone asked if goods can be added to the international registration
and that answer is no the scope of the international registration cannot
be changed i think where the confusion came is when
i was talking about subsequent designations
and i said one of the reasons you may want to file a subsequent
designation is if you've already filed a designation in a country let's
say france you've already designated france
and you want to expand the listing of goods and services
based on the international registration that are in france so when you filed
initially you only filed for some of the goods and
services in france so you filed a limitation and
now you're making money hand over fist and
you want to expand the scope of what you're selling in
france you can file a subsequent designation to
indicate that you want to seek protection
for additional goods and services so long as they are
already included in the international registration
so the scope of the international registration
the outer scope of the international registration
is set when you file your international application at that point from that
point forward all you can do is make it more narrow
okay so we haven't even put a dent in your questions but it's 4 30.
so i wanted to let you know first of all that any questions that you've asked
that we were not able to get to please email them to the tm policy
mailbox that email address is tm policy tm
icy at uspto.gov and we will respond to your email
from that from that mailbox also we wanted to ask for your feedback on
the webinar we are always looking to improve what we
do and we would love to hear from you so for that please email any feedback
you have to tm underscore
webinar w-e-b-i-n-a-r uspto.gov again we really
appreciate your comments and your suggestions
and i don't know kelly if there's any if there are any other announcements i may
have forgotten i'm going to rely on you to jump in and
save the day
we keep getting questions about whether the presentation the slides will be
available and again both the recording of the presentation and the
slides will be available on the uspto website
with that thank you so much for attending we
really appreciate your participation and have a great afternoon!