United States Patent and Trademark Office OG Notices: 16 December 2003
Exam Guide No. 2-03
Guide to Implementation of
Madrid Protocol in the United States
October 28, 2003
I. OVERVIEW OF THE MADRID SYSTEM 3
II. INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES 5
A. Who Can File 5
B. Minimum Requirements for Date of Receipt of International Application
in USPTO 5
1. International Application Must be Filed Through TEAS 6
2. Basic Application or Registration Number 6
3. Name and Address of Applicant 6
4. Reproduction (Drawing) of Mark 8
5. Color Claim 9
6. Identification of Goods/Services 9
7. Classification in International Applications 10
8. List of Contracting Parties 11
9. Fees 12
10. Statement of Entitlement 12
11. Description of Mark 12
12. Indication of Type of Mark 12
13. E-Mail Address 12
C. Certification of International Application in USPTO 12
D. Date of International Registration 14
E. IB Requirements for Complete International Application. 14
F. Examination of Application by IB 16
G. Irregularities in International Application 17
1. Fee Irregularities 17
2. Classification of Goods and Services 17
3. Identification of Goods and Services 18
4. Irregularities that Must Be Remedied by the USPTO 19
5. Other Irregularities Must Be Remedied By Applicant 19
6. Filing Directly With the IB 20
H. Subsequent Designation - Request for Extension of Protection
Subsequent to International Registration 20
1. USPTO Requirements 20
2. Irregularities in Subsequent Designation 21
I. Dependence & "Central Attack": Restriction, Abandonment,
Cancellation or Expiration of Basic Application or Registration
During First 5 Years 21
J. Transformation When the USPTO is the Office of Origin 22
K. USPTO Must Notify IB of Division or Merger of Basic Application or
Registration 22
L. Representative 22
III. PAYMENT OF INTERNATIONAL FEES THROUGH THE USPTO 23
IV. REQUEST FOR EXTENSION OF PROTECTION OF INTERNATIONAL REGISTRATION
TO THE UNITED STATES 24
A. Filing Request for Extension of Protection to United States 24
1. Section 66(a) Basis 24
2. Filing Date 24
3. Declaration of Intent to Use Required 24
4. Use Not Required 25
5. Priority 25
6. Filing Fee 25
7. Constructive Use 25
8. Cannot be Based on USPTO Basic Application or Registration 26
B. Examination of Request for Extension of Protection to the
United States 26
1. Examined as Regular Application 26
2. Examination of Identification and Classification of Goods/Services
in 66(a) Applications 26
3. Mark Must Be Registrable on Principal Register 27
4. Refusal Must Be Made Within 18 Months 27
5. Issuing Office Actions 27
6. Correspondence Address 27
7. Mark Cannot Be Amended 27
8. Jurisdiction 28
C. Notice of Refusal 28
1. Notice Must be Sent Within 18 Months 28
2. Requirements for Notice of Refusal 29
3. What Happens After Notification of Refusal 29
4. Refusal Pertaining to Less Than All the Goods/Services 29
5. Confirmation or Withdrawal of Provisional Refusal 30
D. Opposition 30
E. Certificate of Extension of Protection 31
F. Assignment of Extension of Protection to the United States 31
G. Invalidation of Protection in United States 32
H. Cancellation of International Registration By IB 32
I. Transformation to Application Under 1 or 44 32
1. Requirements for Transformation 32
2. Examination of Transformed Application 33
J. Renewal of Registered Extension of Protection to the United States 34
K. Affidavits of Use or Excusable Nonuse 34
L. Incontestability 35
M. Replacement 35
N. Amendment of Registered Extension of Protection to the United States 35
V. RENEWAL OF INTERNATIONAL REGISTRATIONS 36
VI. COMMUNICATIONS WITH INTERNATIONAL BUREAU REGARDING INTERNATIONAL
REGISTRATIONS 36
A. Recording Changes in International Register 36
1. Change in Ownership of International Registration 37
2. Restriction of Holder's Rights of Disposal 38
3. Change of the Holder's Name or Address 40
4. Change of Name or Address of Representative 40
5. Limitation, Renunciation, Cancellation of International
Registration 40
6. Correction of Errors in International Registration 40
7. Merger of International Registrations 41
8. License 41
9. No Other Changes Can Be Made 41
B. USPTO Will Receive Notices of Changes in International Registration 41
VII. DIVISION OF REGISTRATIONS 42
This sets forth the procedures for implementation of the Madrid Protocol
Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921
("MPIA"). The MPIA is effective November 2, 2003. The MPIA provides that:
(1) the owner of a U.S. application or registration may seek protection of
its mark in any of the countries party to the Protocol Relating to the
Madrid Agreement Concerning the International Registration of Marks
("Madrid Protocol") by submitting a single international application to the
International Bureau of the World Intellectual Property Organization ("IB")
through the United States Patent and Trademark Office ("USPTO"); and (2)
the owner of an application or registration in a country party to the
Madrid Protocol may obtain an international registration from the IB and
request an extension of protection of the international registration to the
United States.
The MPIA is posted on the USPTO website at
http://www.uspto.gov/web/trademarks/PL107_273.htm#D. A Final Rule,
published in the Federal Register on September 26, 2003, at 68 FR 55748, is
posted at http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf.
The Madrid Protocol, Common Regulations Under the Madrid Agreement
Concerning the International Registration of Marks and the Protocol
Relating to That Agreement (April 2002) ("Common Regs."), and Guide to
International Registration (2002) are currently available on the IB's
website at http://www.wipo.int/madrid/en/. The Common Regs. are the
procedures agreed to by the parties to the Madrid Protocol regarding the
administration of the Madrid Protocol, pursuant to Article 10(2)(iii).
Website addresses cited in this guide were available as of
October 27, 2003.
I. OVERVIEW OF THE MADRID SYSTEM
The Madrid system of international registration is governed by two
treaties: the Madrid Agreement Concerning the International Registration
of Marks, which dates from 1891, and the Protocol Relating to the Madrid
Agreement, which became effective December 1, 1995. The United States is
party only to the Protocol, not to the Agreement.
The Madrid system is administered by the IB. To apply for an international
registration under the Protocol, an applicant must be a national of, be
domiciled in, or have a real and effective business or commercial
establishment in one of the countries or intergovernmental organizations
that are members of the Protocol ("Contracting Parties"). The application
must be based on a trademark application filed in or registration issued by
the trademark office of one of the Contracting Parties ("basic application"
or "basic registration"). The international application must be for the
same mark and include a list of goods/services that is identical to or
narrower than the list of goods/services in the basic application or
registration. The international application must designate one or more
Contracting Parties in which an extension of protection of the
international registration is sought.
The applicant must submit the international application through the
trademark office of the Contracting Party in which the basic application or
registration is held ("Office of Origin"). The Office of Origin must
certify that the information in the international application corresponds
with the information in the basic application or registration. If the IB
does not receive the international application within 2 months of the date
it was received by the Office of Origin, the date of the international
registration will be the date the international application was received by
the IB.
The international registration is dependent on the basic application or
registration for five years. If the basic application or registration is
abandoned, cancelled or expired, in whole or in part, during this five-year
period, the IB will cancel the international registration. See section
II.I below for further information.
The holder of an international registration may request protection in
additional Contracting Parties by submitting a subsequent designation. A
subsequent designation is a request by the holder of an international
registration for an extension of protection of the registration to
additional Contracting Parties.
Each Contracting Party designated in an international application or in a
subsequent designation will examine the request for extension of protection
as a national application under its laws. Under Article 5 of the Protocol
and Common Regs. 16 and 17, there are strict time limits (a maximum of 18
months) for the trademark office of a Contracting Party to enter a refusal
of an extension of protection. If the Contracting Party does not notify
the IB of a refusal within this time period, the mark is automatically
protected. However, the extension of protection may be invalidated in
accordance with the same procedures for invalidating a national
registration, e.g., by cancellation.
The Madrid Protocol may apply to the USPTO in three ways:
Office of Origin. The USPTO is the Office of Origin if an
international application or registration is based on an application
pending in or a registration issued by the USPTO. See Section II below.
Office of a Designated Contracting Party. The USPTO is the Office
of a Designated Contracting Party if the holder of an international
registration requests an extension of protection of that registration to
the United States. See Section IV below.
Office of the Contracting Party of the Holder. If the holder of an
international registration is a national of, is domiciled in, or has a real
and effective industrial or commercial establishment in the United States,
the holder can file certain requests with the IB through the USPTO, such
as requests to record changes of ownership (see section VI.A.1 below) and
restrictions on the holder's right to dispose of an international
registration (see section VI.A.2 below). The expression "Contracting
Party of the Holder" includes the "Office of Origin."
Common Reg. 1(xxvibis).
II. INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES
This section covers international applications and registrations
originating from the United States, i.e., international registrations based
on an application pending in the USPTO or a registration issued by the
USPTO. See Section IV below for information about requests for extension
of protection to the United States by the holder of an international
registration originating from another country. International applications
originating from the United States will be processed by the USPTO's new
Madrid Processing Unit ("MPU").
A. Who Can File
Under Section 61 of the Trademark Act and Article 2(1) of the Protocol, a
qualified owner of an application pending in the USPTO or a qualified owner
of a registration granted by the USPTO may file an application for
international registration through the USPTO. To qualify, the
international applicant must:
(1) Be a national of the United States;
(2) Be domiciled in the United States; or
(3) Have a real and effective industrial or commercial establishment in
the United States.
If joint applicants file, each applicant must meet these requirements.
Common Reg. 8(2).
B. Minimum Requirements for Date of Receipt of International Application in
USPTO
The minimum requirements for a date of receipt of an international
application in the USPTO are set forth in 37 C.F.R. 7.11.
1. International Application Must be Filed Through TEAS
An international application must be filed through the Trademark Electronic
Application System ("TEAS"). 37 C.F.R. 7.11(a).
TEAS will require the applicant to select between two different forms, a
prepopulated form or a free-text form. The applicant can use the
prepopulated form if: (1) the international application is based on a
single basic application or registration; (2) the data from the basic
application or registration has been entered into the Trademark
Applications and Registrations Retrieval ("TARR") database; and (3)
applicant's changes to the international application are limited to:
Narrowing the list of goods or services;
Changing the classification; and/or
Changing the applicant's address.
For all other international applications, the applicant must fill in all
the fields in the free-text form.
If the international application is based on a newly filed application, the
applicant can check TARR at http://tarr.uspto.gov/ to determine whether the
basic application data has been entered. If it has not yet been entered,
the applicant must use the free-text form.
The prepopulated form will automatically display the exact information that
is in the USPTO database for one specific U.S. serial number or
registration number. If the applicant does not make any changes to this
data, the international application will be certified and forwarded
directly to the IB without MPU review of the data.
Certain data fields on the prepopulated form can be changed (e.g.,
narrowing the scope of the identification of goods and/or recitation of
services in the U.S. application or registration); however, if the
applicant changes any data on the prepopulated form, an MPU paralegal must
review the international application before it can be certified and sent to
the IB.
If the applicant uses the free-text form, an MPU paralegal must review the
application before it can be certified.
2. Basic Application or Registration Number
The international application must include the filing date and serial
number of the basic application, or the registration date and registration
number of the basic registration. 37 C.F.R. 7.11(a)(1).
3. Name and Address of Applicant
An international application must include the name and current address of
the applicant. The name of the applicant must be identical to the name of
the applicant/registrant in the basic application or registration. 37
C.F.R. 7.11(a)(2). If the international applicant is not the record owner
of the basic application or registration, the applicant must record the
assignment (or other document transferring title) with the Assignment
Services Division of the USPTO prior to filing the international
application.
On the prepopulated form, the applicant's name cannot be changed, so the
international applicant's name will always be identical to the name of the
owner of the basic application or registration.
When the applicant submits a free-text form, an MPU paralegal will check
the TRAM (Trademark Reporting and Monitoring) System to verify that the
name of the owner of the basic application or registration is identical to
the name of the international applicant. If the names are identical and
all other requirements have been met, the MPU paralegal will certify and
forward the international application to the IB.
If the names are not identical, the MPU Paralegal will check the Assignment
Database to determine whether an assignment or other document affecting
title that is not reflected in TRAM has been recorded in the Assignment
Services Division. If Assignment records do not show a clear chain of
title to the international applicant, the USPTO will notify the applicant
that the application cannot be certified. If Assignment records do show a
clear chain of title, the MPU Paralegal will update the ownership field in
TRAM.
Because a delay in certifying and forwarding an international application
to the IB may affect the date of the international registration, any
request to record a change in ownership of a U.S. basic application or
registration should be filed well in advance of the filing of the
international application to allow sufficient processing time. The USPTO
strongly recommends use of the Electronic Trademark Assignment System
(ETAS), at http://etas.uspto.gov. Assignments filed electronically are
recorded much more quickly than assignments filed by mail. If there is an
unrecorded change in ownership, and the international applicant does not
use ETAS to record the change, it is unlikely that the USPTO will be able
to certify or forward the international application to the IB within two
months after the application was received in the USPTO. In this situation,
the date of the international registration will be the date of receipt of
the application in the IB.
Recording a document with the Assignment Services Division may not change
the record of ownership in TRAM and TARR, the databases maintained by the
Trademark Operation. For certain documents recorded on or after
November 2, 2003, the USPTO will automatically update TRAM and TARR, even
if the new owner does not file a request to change the ownership
information in the trademark databases. See Exam Guide No. 1-03, section
V. For documents recorded before November 2, 2003, and documents recorded
on or after November 2, 2003, that do not meet the criteria set forth in
Exam Guide No. 1-03, the new owner must notify the Trademark Operation in
writing that ownership has changed, and request that the ownership field in
the trademark databases be updated. 37 C.F.R. 3.85.
If an owner of a U.S. basic application or registration has filed a request
to record a change of ownership, the owner should check the TARR database
at http://tarr.uspto.gov/, to determine whether the ownership information
in the Trademark databases has been updated before submitting an
international application. TARR contains the same information as TRAM. If
a change of ownership that has been recorded with the Assignment Services
Division is not reflected in TRAM and TARR, the new owner should file a
written request that the Trademark Operation update its databases with the
new owner information.
4. Reproduction (Drawing) of Mark
An international application must include a reproduction of the mark that
(1) is the same as the mark in the basic application or registration; and
(2) meets the requirements of 37 C.F.R. 2.52. 37 C.F.R. 7.11(a)(3). If
the applicant uses the prepopulated form, TEAS will prepopulate the
international application with the reproduction from the basic application
or registration, or create a reproduction of the word mark.
Standard Character Reproductions. If an applicant wants to claim standard
characters, the applicant should check the appropriate box in TEAS. In the
free-text form, applicant must type the mark in the appropriate field or
attach a digitized image of the mark that meets the requirements of 37
C.F.R. 2.53(c). 37 C.F.R. 2.53(a). The USPTO's standard character
chart will be posted on the USPTO website and linked to TEAS forms.
Special Form Reproductions. If the mark is in special form, the
reproduction must be a digitized image of the mark that is in .jpg format
and scanned at no less than 300 dots per inch and no more than 350 dots per
inch, with a length of no less than 250 pixels and no more than 944 pixels,
and a width of no less than 250 pixels and no more than 944 pixels. All
lines must be clean, sharp and solid, not fine or crowded, and produce a
high quality image when copied. 37 C.F.R. 2.52(c) and 2.53(c). TEAS
will generate a digitized image using the reproduction in the basic
application or registration. If the quality of the image generated by TEAS
is poor, the applicant may attach a higher quality digitized image.
Use of Color. If the mark in the basic application or registration is
depicted in black and white and does not include a color claim, the
reproduction of the mark in the international application must be black and
white. If the mark in the basic application or registration is in color,
the reproduction of the mark in the international application must be in
color. If the mark in the basic application or registration is depicted in
black and white and includes a color claim, the international application
must include both a black and white reproduction of the mark and a color
reproduction of the mark. 37 C.F.R. 7.11(a)(3).
The USPTO will begin accepting color reproductions on November 2, 2003.
For applications filed on or after this date, the USPTO will no longer
accept black and white reproductions with a color claim, or reproductions
that show color by the use of lining. 37 C.F.R. 2.52(b)(1). See Exam
Guide No. 1-03, section I.B.1.
As noted above, if the mark is depicted in black and white in the basic
application or registration and includes a color claim, the international
application must include both a black and white reproduction of the mark
and a color reproduction of the mark that meet the requirements of
Trademark Rule 2.52. 37 C.F.R. 7.11(a)(3); Common Reg. 9(4)(a)(vii). For
example, if the basic application or registration included a color claim
and depicted the color on the reproduction by the use of color lining or by
a statement describing the color, the applicant must include both a color
reproduction of the mark and a black and white reproduction of the mark.
If the applicant uses the prepopulated TEAS form, TEAS will prepopulate the
international application with a black and white reproduction that is
identical to the mark in the basic application or registration, and the
applicant must attach a color reproduction that meets the requirements of
Trademark Rules 2.52 and 2.53 for reproductions filed through TEAS.
37 C.F.R. 2.52(c) and 7.11(a)(3).
5. Color Claim
If color is claimed as a feature of the mark in the basic application
and/or registration, the international application must include a statement
that color is claimed as a feature of the mark and set forth the same
name(s) of the color(s) claimed in the basic application and/or
registration. 37 C.F.R. 7.12(a).
If the basic application or registration includes a description of the mark
indicating that color is used on the mark, or a reproduction that is lined
for color, the USPTO will presume that color is a feature of the mark,
unless the basic application or registration includes a statement that
"no claim is made to color" or "color is not a feature of the mark."
TMEP 807.09(d). For applications filed on or after November 2, 2003, if
the drawing shows color, the applicant must include a claim that color is a
feature of the mark. 37 C.F.R. 2.52(b)(1).
If color is not claimed as a feature of the mark in the basic application
and/or registration, the applicant may not claim color as a feature of the
mark in the international application. 37 C.F.R. 7.12(b).
6. Identification of Goods/Services
An international application must include a list of goods/services that is
identical to or narrower than the goods/services in the basic application
or registration. 37 C.F.R. 7.11(a)(7).
The prepopulated form will include the list of goods/services in the basic
application or registration. The applicant may edit the list of
goods/services by either deleting particular goods/services or revising the
wording of the identification. In the free-text form, the applicant
must enter the goods/services manually, and may omit goods or services, or
revise the wording of the identification.
7. Classification in International Applications
The goods/services must be classified according to the Nice Agreement
Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks ("Nice Agreement").
37 C.F.R. 7.11(a)(7). Failure to properly classify goods or services in
an international application according to the international classification
system will result in an IB notice of irregularity. Because the final
decision on the classification of the goods/services in an international
application rests with the IB, the USPTO will not reclassify or give advice
as to the reclassification of goods/services. The IB provides guidance on
its website at http://www.wipo.int/classifications/en/.
If the goods or services in the basic application or registration are
classified in Classes A, B or 200 (which are not part of the international
classification system) or are classified in other classes under the old
U.S. classification system, it is advisable to reclassify the
goods/services into international classes in the international application.
Amendment of the corresponding basic U.S. application or registration is
not permitted in this situation. In addition, if the identification
of goods in the basic application or registration comprises kits or gift
baskets, it is advisable for the international applicant to either narrow
the identification in order to classify the goods in a single International
Class, or pay additional fees for additional International Classes.
The MPU does not certify classification of the goods/services in the
international application. Therefore, the owner of the United States
application or registration does not have to classify the goods/services in
the international application in the same class(es) in which they are
classified in the United States basic application or registration. Both
the prepopulated form and the free-text form will allow an applicant to
change the classification of goods/services in an international
application.
In the situations discussed below, it is advisable for the international
applicant to reclassify the goods in the international application, in
order to avoid a notice of irregularity from the IB.
U.S. Classes A, B & 200
Classes A, B & 200 are classes from the old U.S. classification system that
are still used in the United States to classify certification marks for
goods (Class A), certification marks for services (Class B) and collective
membership marks (Class 200). These classes are not included in the
International Classes under the Nice Agreement. Therefore, an
international application based on a U.S. application or registration in
U.S. Classes A, B or 200 should be reclassified. If the applicant does not
reclassify its goods or services into the proper International Class, the
IB will issue a notice of irregularity.
U.S. Classes A & B
It has been the longstanding practice in the United States to accept
identifications of goods or services for these classes that are broader
than those that would be accepted in applications for goods/services in
other classes. TMEP 1306.06(f). In many situations, it will be difficult
to reclassify these broad identifications into appropriate International
Classes. For example, a goods certification mark in U.S. Class A for
"remanufactured, refurbished and reconditioned electrical equipment" could
include goods in International Classes 7, 9 and/or 11, and possibly
others. In a situation like this, the U.S. applicant should specify the
type of electrical equipment that is being certified, and either apply in
and pay the fees for all appropriate classes, or limit the specification of
"electric equipment" to cover goods in one class only.
In some certification mark applications/registrations, the goods/services
will be easily classified in one class of the International Classification
system. For example, a services certification mark for "testing laboratory
and calibration laboratory accreditation services" would be classified in
International Class 42. However, it is important to be aware that multiple
classes may be required when reclassifying goods/services in U.S. Classes A
and B.
U.S. Class 200
Class 200 presents a similar problem and a similar solution. A broad
identification of the subject organization in a collective membership mark
application or registration is difficult to reclassify. For example, the
wording "indicating membership in a conservative youth organization" is too
broad and vague for classification in an International Class. On the other
hand, "indicating membership in an organization of consulting
communications engineers" is easily classified in International Class 42.
As with the certification marks, an applicant may have to clarify, specify,
or narrow the description of the organization in the international
application in order to classify the organization in an International
Class.
Kits, Gift Baskets
The USPTO policy regarding the identification and classification of kits
and gift baskets differs from the policy of the IB regarding the
classification of these goods.
The USPTO permits registration of a kit or gift basket in a single
International Class, even if the identification of goods lists items that
are classified in other classes. The IB and most foreign countries will
not accept an identification of goods in a particular class that includes a
reference to goods that are classified in other classes. If an
international application includes kits and gift baskets, and the
identification of goods refers to items classified in more than one class,
the IB is likely to issue a notice of irregularity requiring the applicant
to separate out the goods into appropriate classes and pay any additional
fees for added classes. To avoid a notice of irregularity, an
international applicant may wish to either narrow the identification to
refer only to items in a single International Class, or submit additional
fees for multiple International Classes.
8. List of Contracting Parties
An international application must list at least one Contracting Party
(i.e., country or intergovernmental organization party to the Madrid
Protocol) in which the applicant seeks an extension of protection of the
international registration. 37 C.F.R. 7.11(a)(8). If the goods/services
in the international application are not the same for all designated
Contracting Parties, the application must include a list of the
goods/services in the international application that pertain to each
designated Contracting Party.
9. Fees
The international application must include the USPTO certification fee, and
the international fees for all classes and all designated Contracting
Parties. 37 C.F.R. 7.11(a)(9). See section III below regarding fees.
10. Statement of Entitlement
An international application must include a statement that the applicant is
entitled to file an international application, specifying that the
applicant: (i) is a national of the United States; (ii) has a domicile in
the United States; or (iii) has a real and effective industrial or
commercial establishment in the United States. Where an applicant's
address is not in the United States, the applicant must provide the address
of the U.S. domicile or establishment. Section 61 of the Trademark Act, 15
U.S.C. 1141a, 37 C.F.R. 7.11(a)(10).
For joint applicants, the application must include a statement of
entitlement for each applicant.
11. Description of Mark
If the basic application or registration included a description of the
mark, the international application must include the same description.
37 C.F.R. 7.11(a)(5).
12. Indication of Type of Mark
The international application must include an indication of the type of
mark, if the mark in the basic application or registration is a
three-dimensional mark, a sound mark, a collective mark, or a certification
mark. 37 C.F.R. 7.11(a)(6).
13. E-Mail Address
The international application must include an e-mail address for receipt of
correspondence from the USPTO. 37 C.F.R. 7.11(a)(11).
C. Certification of International Application in USPTO
Under Section 62 of the Trademark Act, 15 U.S.C. 1141b, if the information
contained in the international application corresponds to the information
in the basic application or basic registration, the USPTO will certify the
international application and forward it to the IB.
Under Article 3(1) of the Protocol and Common Reg. 9(5)(d), the USPTO must
sign the international application and certify:
The date on which the USPTO received the international application;
That the mark in the international application is the same as the
mark in the basic application or registration;
That the applicant is the same person or entity listed as the owner
of the basic application or registration;
That the goods/services identified in the international application
are covered by the basic application or registration;
That the applicant is qualified to file an international application
under Section 61 of the Trademark Act and Article 2(1);
That, if the international application includes a description of the
mark, the description is consistent with the basic application or
registration (Common Regs. 9(4)(a)(xi) and 9(5)(d)(iii));
That, if the international application indicates that the mark is a
color or combination of colors, this indication is consistent with the
basic application or registration (Common Regs. 9(4)(a)(viibis) and
9(5)(d)(iii));
That, if color is claimed as a feature of the mark in the basic
application or registration, the same claim is included in the
international application (Common Reg. 9(5)(d)(v));
That, if the international application indicates that the mark is
three-dimensional, this indication is consistent with the basic
application or registration (Common Regs. 9(4)(a)(viii) and 9(5)(d)(iii));
That, if the international application indicates that the mark is a
sound mark, this indication is consistent with the basic application or
registration (Common Regs. 9(4)(a)(ix) and 9(5)(d)(iii));
That, if the international application indicates that the mark is a
collective or certification mark, this indication is consistent with the
basic application or registration (Common Regs. 9(4)(a)(x) and
9(5)(d)(iii)).
If an applicant uses the prepopulated TEAS form without changing any of the
information (see section II.B.1 above), the international application will
be certified and forwarded directly to the IB without MPU review. In all
other cases, an MPU paralegal must review the data in the international
application before it can be certified.
If the international application meets the requirements of 37 C.F.R.
7.11(a), the USPTO will certify the international application and send it
electronically to the IB. 37 C.F.R. 7.13(a).
If the application does not meet the requirements of 37 C.F.R. 7.11(a),
the USPTO will not certify or forward the application. The USPTO will
refund any international fees paid through the USPTO; however the USPTO
certification fee is not refundable. 37 C.F.R. 7.13(b). The
applicant should receive immediate notification of the deficiency, either
through a TEAS error message or an e-mail notification. The applicant can
promptly refile a corrected international application through TEAS, with
the required international fees and USPTO certification fee.
D. Date of International Registration
If the IB receives the international application within 2 months of the
date of receipt in the USPTO, the date of the international registration
will be the date of receipt in the USPTO. If the IB does not receive the
international application within 2 months of the date of receipt in the
USPTO, the date of the international registration will be the date of
receipt in the IB. Article 3(4); Common Reg. 15.
Common Reg. 15 sets forth the IB's minimum requirements that may affect the
date of the international registration:
Adequate identification of the applicant with sufficient information
to contact the applicant or the applicant's representative;
Reproduction of the mark;
Indication of the goods or services; and
Designation of Contracting Party or Parties for which extension of
protection is sought.
If any of these elements is omitted from the international application, the
IB will notify both the applicant and the USPTO. If the missing element(s)
is received in the IB within 2 months of the date of receipt of the
international application in the USPTO, the international registration will
bear the date of receipt of the international application in the USPTO. If
the missing element(s) is not received in the IB within 2 months of the
date of receipt of the international application in the USPTO, the date of
the international registration will be the date of receipt of the last of
the missing elements in the IB. In either case, the missing element(s)
must be received in the IB on or before the deadline specified in the
notice of irregularity. Article 3(4); Common Reg. 15(1).
See section II.G below for information about correcting irregularities in
an international application.
E. IB Requirements for Complete International Application.
The international application requirements are set forth in Article 3 of
the Protocol and Common Reg. 9. The USPTO will not examine the
international application to determine whether it is complete. If the
application meets the minimum requirements set forth in 37 C.F.R.
7.11(a), the USPTO will certify the application and send it to the IB.
The IB will examine it for completeness. The requirements for a complete
international application originating from the United States are:
Name and Address. The name and address of the applicant;
Basic Application(s) or Registration(s). The serial number and filing
date of the basic application(s), or the number and date of the basic
registration(s). The international application may be based on more than
one basic application or registration;
Entitlement to File. An indication that the applicant is (1) a
national of the United States; (2) domiciled in the United States; or (3)
has a real and effective industrial or commercial establishment in the
United States (Common Reg. 9(5)(b));
Fees. The international application must include the basic filing
fee charged by the IB; the supplementary fee for each class of goods and
services beyond 3 classes; the complementary fee for designation of each
country to which extension of the international registration is sought; and
the transmittal fee that the USPTO charges to process the international
application. Articles 8(1) and 8(2); Common Regs. 9(4)(a)(xiv), 10(2) and
34.
Goods/Services. A list of the goods or services on or in connection
with which the applicant seeks international registration (Article 3(2);
Common Reg. 9(4)(a)(xiii));
Class. The international class of goods or services, if known
(Article 3(2); Common Reg. 9(4)(a)(xiii));
Reproduction (Drawing) of Mark. A clear reproduction of the mark
that is no more than 8 cm high by 8 cm wide. Common Reg. 9(4)(a)(v). The
mark must be the same as the mark in the basic application or registration.
If the mark in the basic application or registration has color, the mark in
the international application must be in color. If the mark in the basic
application or registration is black and white, the mark in the
international application must be in black and white. If the mark in the
basic application or registration is presented in black and white but
contains a color claim, the applicant must submit both a black and white
and a color reproduction. Common Reg. 9(4)(a)(vii);
Color. If color is claimed as a distinctive feature of the mark,
the international application must include an indication to that effect,
and must set forth the name of the color(s) (Article 3(3); Common Reg.
9(4)(a)(vii)). If the mark in the basic application or registration
consists of color(s), the international application must include a
statement to that effect (Common Reg. 9(4)(a)(viibis));
Contracting Parties. The names of the Contracting Party or Parties
in which the applicant seeks protection (Common Reg. 9(4)(a)(xv);
Declaration of Intent to Use. A verified statement that the
applicant has a bona fide intention to use the mark in commerce on or in
connection with the goods or services listed in the application, if any of
the Contracting Parties designated in the international application require
such a declaration (Common Reg. 9(5)(f)). Under Common Reg. 7(2), a
Contracting Party may notify the IB that it requires a signed declaration
of intention to use the mark.
Transliteration. If the mark consists of or contains non-Latin
characters or numerals other than Arabic or Roman numerals, a
transliteration of that matter in Latin characters and Arabic numerals
(Common Reg. 9(4)(a)(xii));
Signature. The USPTO must sign the international application. The
IB does not require the applicant's signature (Common Reg. 9(2)(b));
Three-Dimensional Mark. If the mark is three-dimensional, the
indication "three-dimensional mark" (Common Reg. 9(4)(a)(viii));
Sound Mark. If the mark is a sound mark, the indication "sound
mark" (Common Reg. 9(4)(a)(ix));
Collective or Certification Mark. If the mark is a collective mark
or a certification mark, an indication to that effect (Common Reg.
9(4)(a)(x));
Standard Characters. If the applicant wishes that the mark be
considered as a mark in standard characters, an indication to that effect
(Common Reg. 9(4)(a)(vi));
Language. International applications originating from the United
States must be in English. 37 C.F.R. 7.3; Common Regs. 6(1)(b) and
6(2)(b)(iii).
Description of Mark. If there is a description of the mark in the
basic application or registration, the international application must
include the same description. 37 C.F.R. 7.11(a)(5) and Common Reg.
9(4)(a)(xi).
Additional Elements That May Be Included in International Application.
The following elements may also be included, but are not mandatory under
the Common Regulations.
Translation. If the mark consists of or contains non-English
wording, an English translation (Common Reg. 9(4)(b)(iii));
Citizenship/State of Incorporation or Organization (Common Regs.
9(4)(b)(i) and (ii)). The citizenship of the applicant(s); or If the
applicant is a juristic person, the state or nation under the laws of
which the applicant is organized;
Disclaimer. If the applicant wishes to disclaim any element of the
mark, the applicant may do so (Common Reg. 9(4)(b)(v));
Representative. See section II.L below;
Priority. An international applicant may claim a right of priority
within the meaning of Article 4 of the Paris Convention if: (1) the
international application contains a claim of priority; and (2) the filing
date of the application that forms the basis of the priority claim
(within the meaning of Article 4 of the Paris Convention) was not more than
six months before the date of the international registration. Article 4(2)
and Common Reg. 9(4)(a)(iv); Guide to International Registration, Para.
B.III.07.08 (2002). The applicant must specify the serial number (if
available), filing date and country of the earlier filing. If the earlier
filing does not relate to all the goods/services listed in the
international application, the applicant must set forth the goods/services
to which it does relate.
F. Examination of Application by IB
Upon receipt of an international application, the IB enters the information
contained in the application into its database and determines whether the
application meets the IB's minimum filing requirements (see Common Reg. 15)
and includes the required fees. If the requirements have been met and the
fees have been paid, the IB will immediately register the mark. The
registration is published in the WIPO Gazette of International Marks. The
IB sends a certificate to the holder, and notifies the Office of Origin and
the Offices of the designated Contracting Parties to which extension of the
registration is sought. Article 3(4); Common Reg. 14(1).
G. Irregularities in International Application
If an international application is unacceptable, the IB will notify both
the applicant and the USPTO of the "irregularity." Some types of
irregularities must be remedied by the USPTO, some must be remedied by the
applicant, and some may be remedied by either the applicant or the USPTO.
See 37 C.F.R. 7.14 and Common Reg. 11.
The MPU paralegals will review all incoming notices of irregularities. If
the irregularity is one that must be remedied by the USPTO (see section
II.G.4 below), the MPU paralegal will respond to the notice and send the
applicant a copy of the response by e-mail.
If the irregularity is not one that must be remedied by the USPTO, the
USPTO will note receipt of the notice of irregularity in its automated
records, but will not take any other action. The USPTO will not respond to
the notice on behalf of the applicant. The USPTO will not send a copy of
the notice to applicant, because the IB has already notified the applicant
of the irregularity.
To be considered timely, responses to IB notices of irregularities must be
received by the IB before the end of the response period set forth in the
IB's notice. Receipt in the USPTO does not fulfill this requirement. When
correcting irregularities through the Office, the applicant should submit
the response as soon as possible, at least one month before the end of the
response deadline set forth in the IB's notice. The USPTO will not process
any response submitted after the IB response deadline. 37 C.F.R. 7.14(e).
1. Fee Irregularities
Where fees paid through the USPTO are insufficient, the IB will notify both
the applicant and the USPTO of the deficiency. If the fee is not received
by the IB on or before the deadline set forth in the IB's notice of
irregularity, the international application is abandoned.
Fees for correcting irregularities in an international application must be
paid directly to the IB, even if the applicant is filing a response to
correct other irregularities through the USPTO. 37 C.F.R. 7.14(c). At
this time, the USPTO's automated system cannot process fees to correct fee
irregularities in an international application.
2. Classification of Goods and Services
If the IB finds an irregularity in classification, it will make a proposal
and send it to both the applicant and the USPTO. The notice will state
whether any additional fees are due. Common Reg. 12(1).
The applicant cannot send its response directly to the IB. The response
must be submitted through the USPTO. The IB must receive the response
within 3 months of the date of the IB notification. 37 C.F.R. 7.14(b);
Common Reg. 12(2). The applicant must use TEAS. 37 C.F.R. 7.14(e).
The USPTO will not review the response, but will forward it to the IB and
notify the applicant accordingly by e-mail. If the IB does not receive a
response within 2 months of the date of the IB's notice of irregularity,
the IB will send a reminder to both the applicant and the USPTO.
Common Reg. 12(3). The USPTO will note the reminder in its records, but
will not take any action.
If additional fees are due as a result of the reclassification, the
applicant must pay the fees directly to the IB. Applicants can establish
accounts with the IB to handle fee payments. If an applicant has an
account with the IB, the applicant may pay the fees by providing the
account number in the response filed with the USPTO. If the applicant does
not have a current account with the IB, the applicant must pay the fees
directly to the IB.
Under Article 3(2) of the Protocol, the IB controls classification. If the
applicant timely responds to the classification irregularity notice, the IB
will notify both the USPTO and the applicant if the IB modifies, withdraws
or maintains its proposal.
3. Identification of Goods and Services
If the IB determines that the identification of goods/services is too vague
or is incomprehensible or is linguistically incorrect, it will notify both
the applicant and the USPTO. Common Reg. 13. The IB may include a
suggested amendment in the notification. The applicant cannot send a
response directly to the IB. Any response regarding the identification of
goods/services must be sent through the USPTO within 3 months of the date
of the IB notification. 37 C.F.R. 7.14(a) and 7.14(b);
Common Reg. 13(2). The applicant must use TEAS. 37 C.F.R. 7.14(d).
The MPU paralegal will review the applicant's response to ensure that the
goods/services identified in the response are within the scope of the
identification in the basic application or registration at the time the
response is filed. If the goods/services in the basic application or
registration have been amended since the date the international application
was submitted to the Office, the goods/services in the response to the IB
notice must be within the scope of the amended goods/services. If the
response includes goods/services that exceed the scope of the
goods/services in the basic application or registration as amended, the MPU
paralegal will reject the response and notify the applicant. If there is
time remaining in the IB response period, the applicant may submit a
corrected response. If the amended goods/services do not exceed the
scope of the goods/services in the basic application or registration as
amended, and the IB response period has not expired, the MPU will certify
the goods/services and forward the response to the IB.
If no proposal acceptable to the IB for remedying the irregularity is made
within 3 months, and all other requirements have been met, the IB will
either (1) include the term in the international registration with an
indication that the IB considers the term to be unacceptable, if the class
of the vague term was specified in the application; or (2) if the class was
not specified, delete the term and notify both the USPTO and the applicant
accordingly. Common Reg. 13(2)(b).
4. Irregularities that Must Be Remedied by the USPTO
The following irregularities must be remedied by the USPTO within 3 months
of the date of notification of the irregularity to avoid abandonment of the
international application:
Application is not presented on the official form or is not typed;
Omission of reproduction of mark;
Omission of list of goods/services;
Omission of designation of Contracting Party or Parties;
Insufficient identification of applicant;
Irregularities relating to the entitlement of the applicant to file
an international application;
Application not signed by USPTO (Signature may be replaced with seal);
Certification by USPTO is defective;
Omission of date and number of basic application or registration.
Common Regs. 11(4) and 15(1).
These elements will be required in the TEAS form, and the USPTO will send
the data electronically to the IB. This should ensure that the above
elements are not omitted. Thus, the USPTO anticipates very few notices of
irregularity that must be remedied by the USPTO.
If the USPTO does not cure the irregularity within 3 months, the
international application is abandoned. Common Regs. 11(4)(b) and 11(5).
When responding to a notice of an irregularity that must be remedied by the
USPTO, the MPU paralegal will send the applicant a copy of the response.
5. Other Irregularities Must Be Remedied By Applicant
Other irregularities to be remedied by applicant include insufficient
information about the applicant's representative; missing transliteration;
insufficient information about a priority claim; unclear reproduction of
the mark; color claim with no color reproduction; and insufficient fees
paid directly to the IB by the applicant. The applicant must remedy the
irregularities within 3 months of the date of the notification.
Common Reg. 11(2).
An applicant may either file the response directly with the IB, or file the
response through the USPTO. To be considered timely, responses to IB
notices of irregularities must be received by the IB before the end of the
response period set forth in the IB's notice. Receipt in the USPTO
does not fulfill this requirement. If submitting a response through the
USPTO, an applicant must use TEAS. 37 C.F.R. 7.14(e).
The USPTO will not review the response to the irregularity but will forward
the response to the IB, and notify the applicant accordingly by e-mail.
6. Filing Directly With the IB
Information about filing directly with the IB is available on the WIPO
website, currently at http://www.wipo.int/madrid/en/. An applicant may c
ontact the IB by mail to the World Intellectual Property Organization, 34
chemin des Colombettes, P.O. Box 18, CH-1211 Geneva 20, Switzerland; by
telephone at 41 22 338 9111; by fax to 41 22 740 1429; or by e-mail to
intreg.mail@wipo.int.
H. Subsequent Designation - Request for Extension of Protection Subsequent
to International Registration
A subsequent designation is a request by the holder of an international
registration for an extension of protection of the registration to
additional Contracting Parties. The requirements for a subsequent
designation are set forth in Article 3ter(2) of the Protocol and Common
Reg. 24. The holder may file the subsequent designation directly with the
IB. There is a form for filing directly with the IB on the IB website at
http://www.wipo.int/madrid/en/.
A holder may file a subsequent designation through the USPTO only if (1)
the international registration is based on a basic application filed with
the USPTO or a basic registration issued by the USPTO, and (2) the holder
is a national of, is domiciled in, or has a real and effective business or
commercial establishment in the United States. Section 64 of the Trademark
Act, 15 U.S.C. 1141d; 37 C.F.R. 7.21(a).
1. USPTO Requirements
The minimum requirements for a date of receipt of a subsequent designation
in the USPTO are set forth in 37 C.F.R. 7.21(b):
Filing through TEAS;
The international registration number;
The name and address of the holder of the international registration;
A statement that the holder is entitled to file a subsequent
designation through the USPTO, specifying that holder: (i) is a national
of the United States; (ii) has a domicile in the United States; or (iii)
has a real and effective industrial or commercial establishment in the
United States. Where a holder's address is not in the United States, the
holder must provide the address of its U.S. domicile or establishment;
A list of goods/services that is identical to or narrower than the
goods/services in the international registration;
A list of the Contracting Parties designated for an extension of
protection;
The international fees for all classes and all Contracting Parties
identified in the subsequent designation;
The USPTO transmittal fee; and
An e-mail address for receipt of correspondence from the USPTO.
The USPTO does not certify subsequent designations. If a subsequent
designation meets the requirements listed above, the USPTO will forward it
to the IB. 37 C.F.R. 7.21(c). If the subsequent designation does not
meet these requirements, the USPTO will not forward the subsequent
designation, and will notify the holder of the reasons. Any international
fees paid through the USPTO will be refunded. The USPTO transmittal fee is
nonrefundable. 37 C.F.R. 7.21(d).
The subsequent designation will bear the date of receipt in the USPTO,
provided that the IB receives it within two months of that date. If the IB
does not receive the subsequent designation within two months of the date
of receipt in the USPTO, the subsequent designation will bear the date of
receipt in the IB. Common Reg. 24(6)(b).
If the subsequent designation meets the requirements of Common Reg. 24, the
IB will record it and notify both the USPTO and the holder of the
recordation. Common Reg. 24(7). A request for extension of protection
made in a subsequent designation expires on the same date as the
international registration. Common Reg. 31(2). See section V below
regarding renewal of international registrations.
2. Irregularities in Subsequent Designation
If a subsequent designation is sent to the IB through the USPTO, the IB
will notify both the holder and the USPTO of any irregularity. Common
Reg. 24(5)(a). Corrections of any irregularity in a subsequent designation
must be sent directly to the IB, even if the subsequent designation was
sent through the USPTO. The USPTO will make note of the notice of
irregularity in its automated records, but will not take any other action.
See 37 C.F.R. 7.21(e).
I. Dependence & "Central Attack": Restriction, Abandonment, Cancellation
or Expiration of Basic Application or Registration During First 5 Years
For a period of 5 years from the date of the international registration,
the registration is dependent on the basic application or basic
registration. Article 6(3). Under 63 of the Trademark Act, 15 U.S.C.
1141c, and Article 6(4) of the Protocol, the USPTO must notify the IB if
the basic application or registration is restricted, abandoned, cancelled,
or expired, with respect to some or all of the goods/services listed in the
international registration:
(1) Within 5 years after the international registration date; or
(2) More than 5 years after the international registration date if the
restriction, abandonment, or cancellation of the basic application or basic
registration resulted from an action that began before the end of the
5-year period.
The IB will cancel (or restrict) the international registration
accordingly. Article 6(4); Common Reg. 22(2)(b). This is sometimes called
"central attack."
The USPTO must notify the IB if there is an appeal, opposition or
cancellation proceeding (or a court proceeding, if the USPTO is aware of
the proceeding) pending at the end of the 5-year period. The USPTO must
notify the IB of the final decision once the proceeding is concluded.
Common Regs. 22(1)(b) and (c). The IB will record this notice in the
International Register and notify the holder and the designated Contracting
Parties.
J. Transformation When the USPTO is the Office of Origin
If the IB cancels an international registration as a result of the
cancellation or restriction of the USPTO basic application and/or USPTO
basic registration under Article 6(4) (see section II.I above), the holder
may "transform" the international registration into national applications
in the offices of the Contracting Parties that were designated for
extension(s) of protection in the international registration.
Transformation must be requested within 3 months from the date of
cancellation of the international registration. Article 9quinquies. The
goods/services in the national application(s) must have been covered by the
cancelled international registration. The filing date for the new
application(s) that results from the transformation of an extension of
protection will be the international registration date (or the date of
recordal of the subsequent designation requesting an extension of
protection to that Contracting Party).
Transformation of an extension of protection may take place only if the IB
cancels or restricts the international registration at the request of the
USPTO, due to cancellation of the USPTO basic application or USPTO
registration. It is not available if the international registration is
cancelled at the request of the holder, or expires for failure to renew.
Transformation is not available at the Office of Origin.
The request for transformation must be filed directly with the designated
Contracting Party, and will be examined as a regular application under the
law of that Contracting Party. The IB is not involved.
See section IV.I below regarding transformation of a request for extension
of protection to the United States into an application under 1 or 44 of
the Trademark Act.
K. USPTO Must Notify IB of Division or Merger of Basic Application or
Registration
Under Common Reg. 23, an Office of Origin must notify the IB if the basic
application or registration is divided into several applications or
registrations, or if several applications or registrations are merged into
a single application or registration, within 5 years after the date of
the international registration.
L. Representative
An applicant for or holder of an international registration may appoint a
representative before the IB by indicating the representative's name in the
appropriate box on the international application or subsequent designation
form. Common Reg. 3(2)(a). The applicant/holder may also appoint a
representative in a subsequent communication submitted to the IB (see
section VI.A.4 below). Common Reg. 3(2)(b). There is a form for
appointing a representative on the IB website at
http://www.wipo.int/madrid/en/.
See section IV.B.6 below regarding the correspondence address in a request
for extension of protection to the United States.
III. PAYMENT OF INTERNATIONAL FEES THROUGH THE USPTO
International Fees. An applicant/holder may pay fees directly to the IB.
See Common Regs. 34 to 38 regarding payment of fees. There is a fee
calculator and a schedule of fees on the IB website at
http://www.wipo.int/madrid/en/, and the TEAS forms include a link to the
IB fee calculator.
An applicant/holder may also pay certain fees through the USPTO. Common
Reg. 34(2). Under 37 C.F.R. 7.7(a), the USPTO has agreed to collect and
forward only the following international fees:
International application fee;
Subsequent designation fee; and
Recording fee for change of ownership of international registration.
An applicant/holder has 3 options for payment of fees for international
filings sent to the IB through the USPTO:
(1) Applicant/holder can establish an account with the IB for debiting
fees, and include the account number on filings;
(2) Applicant/holder may pay the fees directly to the IB, and provide
the USPTO with an IB receipt number; or
(3) Applicant/holder can pay the fees to the USPTO in U.S. dollars by
credit card, EFT, or USPTO deposit account.
37 C.F.R. 7.7(b).
If applicant/holder uses the third option and pays the fees to the USPTO in
U.S. dollars, the USPTO will convert the fee and submit it to the IB in
Swiss currency.
Fees to Correct Irregularities Must be Paid Directly to the IB. Fees for
correcting irregularities in an international application must be paid
directly to the IB, even if the applicant is filing a response to correct
other irregularities through the USPTO. 37 C.F.R. 7.14(c).
IV. REQUEST FOR EXTENSION OF PROTECTION OF INTERNATIONAL REGISTRATION TO
THE UNITED STATES
A. Filing Request for Extension of Protection to United States
The holder of an international registration may file a request for
extension of protection to the United States. Section 66(a) of the
Trademark Act, 15 U.S.C. 1141f. The request for extension of protection
to the United States may be included in the international application, or
in a subsequent designation made after the IB registers the mark. The IB
will transmit the request for extension of protection to the United States
to the USPTO electronically. The USPTO will refer to a request for
extension of protection to the United States as a " 66(a) application."
37 C.F.R. 7.25(b).
1. Section 66(a) Basis
Section 66(a) of the Trademark Act provides a new basis for filing in the
United States. See 37 C.F.R. 2.34(a)(5). A 66(a) applicant cannot
change the basis or claim more than one basis. 37 C.F.R. 2.34(b)(3) and
2.35(a).
2. Filing Date
If a request for extension of protection of an international registration
to the United States is made in an international application, the filing
date of the 66(a) application is the international registration date. If
a request for extension of protection to the United States is made in a
subsequent designation, the filing date of the 66(a) application is the
date that the subsequent designation was recorded by the IB. 37 C.F.R.
7.26.
3. Declaration of Intent to Use Required
A request for extension of protection to the United States must include a
declaration that the applicant has a bona fide intention to use the mark in
commerce that can be controlled by the United States Congress. Section
66(a) of the Trademark Act, 15 U.S.C. 1141f(a). The declaration must
include a statement that the person making the declaration believes
applicant to be entitled to use the mark in commerce; and that to the best
of his/her knowledge and belief no other person, firm, corporation, or
association has the right to use the mark in commerce, either in the
identical form thereof or in such near resemblance thereto as to be likely,
when used on or in connection with the goods/services of such other person,
to cause confusion, or to cause mistake, or to deceive. Section 60(5) of
the Trademark Act, 15 U.S.C. 1141(5). The declaration must be signed by
(1) a person with legal authority to bind the applicant; (2) a person with
firsthand knowledge of the facts and actual or implied authority to act on
behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. 10.1
who is authorized to practice before the USPTO who has an actual written or
verbal power of attorney or an implied power of attorney from the
applicant. 37 C.F.R. 2.33(a). The USPTO has provided the IB with wording
for the declaration of the applicant's bona fide intention to use the mark
in commerce, which is part of the official IB form for international
applications and subsequent designations in which the United States is
designated for an extension of protection. Instructions as to who is a
proper party to sign the declaration pursuant to 37 C.F.R. 2.33(a) have
also been provided to the IB.
The verified statement is part of the international registration on file at
the IB. 37 C.F.R. 2.33(e). The examining attorney does not have to
review the international registration to determine whether there is a
proper declaration of intent to use, or issue any inquiry regarding the
verification of the application.
4. Use Not Required
Use in commerce prior to registration is not required. Section 68(a)(3) of
the Trademark Act, 15 U.S.C. 1141h(a)(3). Under 71 of the Trademark Act,
15 U.S.C. 1141k, periodic affidavits of use or excusable nonuse are
required to maintain a registered extension of protection. See section
IV.K below.
5. Priority
A holder may claim a right of priority within the meaning of Article 4 of
the Paris Convention if:
(1) The request for extension of protection contains a claim of
priority;
(2) The request for extension of protection specifies the filing date,
serial number and the country of the application that forms the basis for
the claim of priority; and
(3) The date of international registration or the date of the recordal
of the subsequent designation requesting an extension of protection to the
United States is not later than 6 months after the date of the first
regular national filing (within the meaning of Article 4(A)(3) of the Paris
Convention) or a subsequent application (within the meaning of Article
4(C)(4) of the Paris Convention).
Section 67 of the Trademark Act, 15 U.S.C. 1141g; Madrid Protocol Article
4(2).
6. Filing Fee
The filing fee for the 66(a) application will be sent to the USPTO by the
IB. Article 8 of the Protocol. See Common Regs. 34 through 38 regarding
international fees.
7. Constructive Use
Under 66(b) of the Trademark Act, 15 U.S.C. 1141f(b), unless extension of
protection is refused, the filing of the request for extension of
protection constitutes constructive use of the mark, conferring the same
rights as those specified in 7(c) of the Trademark Act, as of the earliest
of the following:
(1) The international registration date, if the request for extension of
protection was filed in the international application;
(2) The date of recordal of the subsequent designation requesting
extension of protection, if the request for extension of protection to the
United States was made after the international registration date; or
(3) The date of priority claimed pursuant to 67 of the Trademark Act.
8. Cannot be Based on USPTO Basic Application or Registration
An international registration in which the United States is the Office of
Origin (i.e., an international registration based on a basic application
pending in the USPTO or a basic registration issued by the USPTO) cannot be
used to obtain an extension of protection to the United States. Section
65(b) of the Trademark Act, 15 U.S.C. 1141e(b); Article 3bis of the
Protocol. The IB will not send a request for extension of protection to
the United States if the international registration is based on a USPTO
basic application or registration.
B. Examination of Request for Extension of Protection to the United States
1. Examined as Regular Application
Under Section 68(a) of the Trademark Act, 15 U.S.C. 1141h, a request for
extension of protection will be examined under the same standards as any
other application for registration on the Principal Register. It is
unnecessary for the examining attorney to review the international
registration on file at the IB, since the IB will forward all the necessary
information with the request for extension of protection.
Except for 37 C.F.R. 2.130-2.131, 2.160-2.166, 2.168, 2.172, 2.173,
2.175, and 2.181-2.186, all rules in 37 C.F.R. Part 2 apply to a request
for extension of protection of an international registration to the United
States, including sections related to proceedings before the Trademark
Trial and Appeal Board, unless stated otherwise. All rules in 37 C.F.R.
part 10 also apply to requests for extension of protection. 37 C.F.R.
7.25(a).
2. Examination of Identification and Classification of Goods/Services
in 66(a) Applications
The examining attorney will examine a 66(a) application, including the
identification of goods/services, according to the same standards of
specificity used in examining applications under 1 and 44 of the
Trademark Act, 15 U.S.C. 1051 and 1126. Specifically, the Examining
Attorney must follow the procedures set forth in the TMEP and identify the
goods/services in accordance with the USPTO's Manual of Acceptable
Identification of Goods and Services ("USPTO ID Manual") whenever possible.
However, under Article 3(2) of the Protocol, the IB controls
classification. The 66(a) application (and any resulting registration)
remains part of the international registration, and a change of
classification in the United States would have no effect on the
international registration. Guide to International Registration Para.
B.III.43.05 (2002). Therefore, the international classification of
goods/services in a 66(a) application cannot be changed from the
classification given to the goods/services by the IB, even if the IB's
classification of goods/services in the 66 application is different from
the classification set forth in the USPTO ID Manual.
Accordingly, if the mark in a 66(a) application appears to be a
certification or collective membership mark, the USPTO will not reclassify
it into U.S. Class A, B or 200. However, the applicant must comply with
all other U.S. requirements for certification and collective
membership marks, regardless of the classification chosen by the IB. See
TMEP 1304 et seq. and 1306 et seq.
3. Mark Must Be Registrable on Principal Register
There is no provision in the Trademark Act for registration of a mark in a
request for an extension of protection on the Supplemental Register. If
the proposed mark is not registrable on the Principal Register, the
extension of protection must be refused. Section 68(a)(4) of the
Trademark Act, 15 U.S.C. 1141h(a)(4); 37 C.F.R. 2.47(c) and 2.75(c).
4. Refusal Must Be Made Within 18 Months
Under 68(c) of the Trademark Act and Article 5 of the Protocol, the USPTO
must notify the IB of any refusal entered in a 66(a) application within 18
months of the date the IB sends the request for extension of protection to
the USPTO. See section IV.C below.
5. Issuing Office Actions
The USPTO will send the first Office action in a 66(a) application to the
IB. The IB will send it to the holder (applicant). The USPTO will send
second and subsequent Office actions directly to the applicant, at the
correspondence address set forth in the request for extension of
protection to the United States, or to the correspondence address provided
in a subsequent communication filed in the USPTO.
6. Correspondence Address
The USPTO will accept a notice of change of the correspondence address in a
66(a) application or a registered extension of protection to the United
States, and will send correspondence to the new address. See TMEP 603 et
seq. regarding the procedures for establishing and changing the
correspondence address in the USPTO. However, this will not change the
representative designated in the international registration. A request to
record a change of the name or address of the representative designated in
the international registration must be filed with the IB; it cannot be
filed through the USPTO. There are forms on the IB website at
http://www.wipo.int/madrid/en/. See Common Reg. 36(i).
7. Mark Cannot Be Amended
The Madrid Protocol and the Common Regulations do not permit amendment of a
mark in an international registration. If the holder of the international
registration wants to change the mark in any way, even slightly, the holder
must file a new international application. The IB's Guide to
International Registration, Para. B.II.69.02 (2002), provides as follows:
[T]here is no provision for a mark that is recorded in the International
Register to be amended in any way, either on renewal or at any other time.
If the holder wishes to protect the mark in a form which differs, even
slightly, from the mark as recorded, he must file a new international
application. This is true even if the mark has been allowed to be changed
in the basic application, the registration resulting from the basic
application or the basic registration, as the case may be (where such
change is possible according to the law of the Contracting Party whose
Office is the Office of origin)....
Accordingly, because an application under 66(a) is a request to extend
protection of the mark in an international registration to the United
States, 37 C.F.R. 2.72 makes no provision for amendment of the mark in a
66(a) application, and the USPTO will not permit any such amendments.
See notice at 68 FR 55748, 55756 (Sept. 26, 2003).
Similarly, after registration, a registrant cannot amend a mark under 7 of
the Trademark Act. See section IV.N below.
8. Jurisdiction
The provisions with respect to requesting jurisdiction over published
66(a) applications are similar to those for applications under 1(a) and
44 of the Trademark Act. 37 C.F.R. 2.84. However, when deciding whether
to grant requests for jurisdiction of 66(a) applications, the Director
must consider the time limits for notifying the IB of a refusal of a 66(a)
application, set forth in Article 5(2) of the Madrid Protocol and 68(c) of
the Trademark Act.
C. Notice of Refusal
1. Notice Must be Sent Within 18 Months
Within 18 months of the date the IB forwards a request for extension of
protection, the USPTO must transmit:
(1) A notification of refusal based on examination;
(2) A notification of refusal based on the filing of an opposition; or
(3) A notification of the possibility that an opposition may be filed
after expiration of the 18 month period. If the USPTO notifies the IB of
the possibility of opposition, it must send the notification of refusal
within 7 months after the beginning of the opposition period or within one
month after the end of opposition period, whichever is earlier.
Section 68(c) of the Trademark Act, 15 U.S.C. 1141h(c); Article 5 of the
Protocol.
If the USPTO does not send a notification of refusal of the request for
extension of protection to the IB within 18 months, the request for
extension of protection cannot be refused. Section 68(c)(4) of the
Trademark Act; Article 5(5); Madrid Reg. 17(2)(iv); Guide to International
Registration Paras B.III.44.06 and B.III.45.03 (2002). If the USPTO sends
a notification of refusal, no grounds of refusal other than those set forth
in the notice can be raised more than 18 months after the filing date of
the request for extension of protection. Section 68(c)(3) of the
Trademark Act.
2. Requirements for Notice of Refusal
A final decision is not necessary; a provisional refusal is sufficient to
meet the 18 month requirement. Under Common Reg. 17, a notice of
provisional refusal must be dated and signed by the USPTO and must contain:
The number of the international registration, preferably accompanied
by an indication of the mark;
All grounds of refusal;
If there is a conflicting mark, the filing date, number, priority
date (if any), the registration date and number (if available), the name
and address of the owner, reproduction of the conflicting mark, and list of
goods/services;
A statement that the provisional refusal affects all the goods and
services, or a list of the goods/services affected;
The procedures and time limit for contesting the refusal, i.e.,
period for response or appeal of the refusal, and the authority with which
an appeal can be filed;
If the refusal is based on an opposition, the name and address of
the opposer.
Where refusal is based on examination, the notice should state that there
is a possibility that the mark will later be opposed.
The IB will record the provisional refusal in the International Register
and transmit it to the holder of the registration. Article 5(3);
Common Reg. 17(4).
If the USPTO's notification of refusal is deficient, the IB will notify
both the holder and the USPTO of the irregularity. Common Reg. 18.
3. What Happens After Notification of Refusal
The holder of an international registration who applies for an extension of
protection to the United States will receive the notification of refusal
through the IB. The holder must respond directly to the USPTO. Standard
examination procedures are used to examine 66(a) applications.
4. Refusal Pertaining to Less Than All the Goods/Services
Where a notification of refusal in a 66(a) application does not pertain to
all the goods/services, the mark is protected for the remaining
goods/services, even if the holder does not respond to the notification of
refusal. Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C.
1141h(c) and 1141141h(c) and 1141i(a), provide that an application under
66(a) of the Trademark Act is automatically protected with respect to any
goods or services for which the USPTO has not timely notified the IB of a
refusal.
Accordingly, 37 C.F.R. 2.65(a) provides that if a refusal or requirement
is expressly limited to only certain goods/services and the applicant fails
to file a response or a complete response to the refusal or requirement,
the application shall be abandoned only as to those particular
goods/services. See Exam Guide No. 1-03, section III for further
information about partial abandonment.
5. Confirmation or Withdrawal of Provisional Refusal
If the USPTO has sent a notice of provisional refusal, once procedures
regarding the refusal are complete, the USPTO must notify the IB that (1)
protection is refused for all goods/services; or (2) the mark is protected
for all goods/services; or (3) the mark is protected for some specified
goods/services. Common Reg. 17(5). The IB will record this and send it to
the holder.
D. Opposition
Section 68(a)(2) of the Trademark Act, 15 U.S.C. 1141h(a)(2), provides
that a request for extension of protection is subject to opposition under
13 of the Trademark Act. As noted above, the USPTO must notify the IB
within 18 months of the filing date of the request for extension of
protection of: (1) a notification of refusal based on the filing of an
opposition; or (2) a notification of the possibility that an opposition may
be filed after expiration of the 18-month period.
The notice must state the dates on which the opposition period begins and
ends, if known. If the dates are unknown, the USPTO must communicate them
to the IB "at the latest at the same time as any notification of a
provisional refusal based on an opposition." Common Reg. 16(1)(b).
Any notification of refusal on the basis of opposition must be received by
the IB within 7 months after the beginning of the opposition period or
within one month after the end of the opposition period, whichever is
earlier. Section 68(c)(2) of the Trademark Act, 15 U.S.C. 11411h(c)(2);
Article 5(2)(c)(ii).
An opposition to a 66(a) application must be filed through the Electronic
System for Trademark Trials and Appeals ("ESTTA"). 37 C.F.R. 2.101(b)(2).
The notice of opposition must include all fees for each party opposer to
oppose the registration in all classes specified in the opposition. 37
C.F.R. 2.101(d)(2). Once filed, an opposition to a 66(a) application may
not be amended to change or add to the grounds for opposition or to add to
the goods or services opposed. 37 C.F.R. 2.107(b).
Request for Extension of Time to Oppose. A request for extension of time
to oppose a 66(a) application must be filed through ESTTA. 37 C.F.R.
2.102(a)(2).
No more than three requests to extend the time for filing an opposition may
be filed. The time for filing an opposition may not be extended beyond 180
days from the date of publication. 37 C.F.R. 2.102(c). This also applies
to 1 and 44 applications.
E. Certificate of Extension of Protection
If the mark in a 66(a) application is published for opposition and is not
opposed, or if the application survives all oppositions filed, the USPTO
will issue a certificate of extension of protection and publish notice of
such certificate in the Official Gazette. Section 69(a) of the
Trademark Act, 15 U.S.C. 1141i(a). From the date of issuance of the
certificate, the extension of protection has the same effect and validity
as a registration on the Principal Register, and the holder of the
international registration has the same rights and remedies as the
owner of a registration on the Principal Register. Section 69(b) of the
Trademark Act. The certificate of registration will look the same as the
certificate issued for registrations resulting from applications based on
1 and 44 of the Trademark Act.
Upon registration, the USPTO will refer to an extension of protection to
the United States as a "registration," "registered extension of
protection," or a "66(a) registration." 37 C.F.R. 7.25(c).
A registered extension of protection always remains part of the
international registration. In this respect, a registered extension of
protection differs from a 44 registration. Section 44 registrations exist
independent of the underlying foreign registration. 15 U.S.C. 1126(f).
F. Assignment of Extension of Protection to the United States
Under 72 of the Trademark Act, 15 U.S.C. 1141l, an extension of
protection to the United States may be assigned, together with the goodwill
associated with the mark, only to a person who is a national of, is
domiciled in, or has a bona fide and effective industrial or commercial
establishment in a country that is party to the Madrid Protocol (or in a
country that is a member of an intergovernmental organization that is a
party to the Madrid Protocol).
Because the extension of protection remains part of the international
registration, assignments of extensions of protection to the United States
must be recorded at the IB. The IB will notify the USPTO of any changes in
ownership recorded in the International Register. The USPTO will record
only those assignments (or other documents of title) that have been
recorded in the International Register, and will automatically update TRAM
and TARR to reflect these changes. Section 10 of the Trademark Act and 37
C.F.R. Part 3 do not apply to assignments of an international registration
or an extension of protection to the United States. 37 C.F.R. 7.22.
See section VI.A.1 below regarding requests to record a change of ownership
in the International Register.
G. Invalidation of Protection in United States
A registered extension of protection to the United States may be
invalidated in an administrative or judicial proceeding, governed by U.S.
law, such as a cancellation proceeding before the Trademark Trial and
Appeal Board or a federal court proceeding. The USPTO must notify the
IB if an extension of protection to the United States is invalidated.
Article 5(6) of the Protocol. The requirements for a notice of
invalidation are set forth in Common Reg. 19.
H. Cancellation of International Registration By IB
If the IB notifies the USPTO that the international registration has been
cancelled with respect to some or all of the goods/services, the USPTO will
cancel the extension of protection with respect to such goods/services as
of the date that the IB cancelled the international registration.
Section 70(a) of the Trademark Act, 15 U.S.C. 1141j; 37 C.F.R. 7.30.
An international registration is dependent on the basic application and/or
basic registration for 5 years after the date of the international
registration. Article 6(3) of the Protocol. If the basic application or
registration is restricted, abandoned, cancelled, or expired, with respect
to some or all of the goods and services listed in the international
registration, the Office of Origin will notify the IB, and the IB will
cancel (or restrict) the international registration. Article 6(4) of the
Protocol. See section II.I above.
See section V below regarding renewal and expiration of international
registrations.
I. Transformation to Application Under 1 or 44
If the IB cancels an international registration in whole or in part at the
request of the Office of Origin under Article 6(4) of the Protocol due to
cancellation of the basic application or registration, the holder of the
registration may "transform" the extension of protection into an
application under 1 or 44 of the Trademark Act for registration of the
same mark for any or all of the cancelled goods and services that were
covered by the extension of protection of the international registration to
the United States. Section 70(c) of the Trademark Act, 15 U.S.C. 1141j;
Article 9quinquies of the Protocol.
1. Requirements for Transformation
The request for transformation must be filed within 3 months after the date
on which the international registration was cancelled, in whole or in part.
Article 9quinquies(i); Section 70(c) of the Trademark Act. The request
must be filed through TEAS, and include:
(1) The serial number or registration number of the extension of
protection to the United States;
(2) The name and address of the holder of the international
registration;
(3) The application filing fee required by 37 C.F.R. 2.6(a)(1) for at
least one class of goods or services; and
(4) An e-mail address for receipt of correspondence from the USPTO.
37 C.F.R. 7.31(a).
The holder must file the request for transformation directly with the
USPTO, and it will be examined as a regular application under U.S. law.
The IB is not involved and should not be notified of the filing of the
request for transformation.
Under 70(c) of the Trademark Act and Article 9quinquies of the Protocol,
transformation may take place only if the international registration is
cancelled or restricted at the request of the Office of Origin under
Article 6(4) of the Protocol, due to the cancellation of the basic
application and/or registration. It is not available if the international
registration expires for failure to renew, or is cancelled or restricted at
the request of the holder, or cancelled or restricted for any other reason.
2. Examination of Transformed Application
A new application under 1 or 44 of the Trademark Act must comply with all
the requirements of the Trademark Act and Trademark Rules of Practice.
37 C.F.R. 7.31(c). The USPTO will assign a new serial number, and will
link the prosecution history of the 66(a) application to the new
"transformed" application.
The USPTO will treat the new application as if it had been filed on (1) the
international registration date, if the request for extension of protection
to the United States was made in the international application, or (2) the
date of recordal of the subsequent designation with the IB, if the request
for extension of protection to the United States was made in a subsequent
designation. If the extension of protection was entitled to priority under
67 of the Trademark Act, the new application is entitled to the same
priority.
If an examining attorney has already performed a search for conflicting
marks, he or she does not have to conduct a new search, since the effective
filing date will not change.
The examining attorney should review the identification of goods/services
to ensure that the goods/services set forth in the request for
transformation are within the scope of the goods/services in the 66(a)
application that were restricted, abandoned, cancelled, or expired.
If the mark in the 66(a) application has already been published or
registered, republication will be required.
Generally, in examining a "transformed" 66(a) application that has already
been published or registered, the Office will only issue requirements or
refusals concerning matters related to the 1 or 44 basis.
The examining attorney should not require the applicant to change the
classification in the transformed application from the classification given
to the goods/services by the IB. See section IV.B.2 above for further
information about classification in international applications and
registrations.
J. Renewal of Registered Extension of Protection to the United States
Renewal of international registrations is handled by the IB, and governed
by Article 7 of the Protocol and Common Regs. 29-31. See section V
below.
Under 70(b) of the Trademark Act, 15 U.S.C. 1141j(b), and Article 3ter(2)
of the Protocol, if the IB does not renew an international registration,
the IB will notify the USPTO that the registration has expired. The
corresponding extension of protection to the United States will expire as
of the expiration date of the international registration. The USPTO will
cancel the extension of protection.
Section 9 of the Trademark Act does not require renewal of an extension of
protection to the United States. However, as noted below, the holder must
file affidavits of use or excusable nonuse under 71 of the Trademark Act.
K. Affidavits of Use or Excusable Nonuse
Under 71 of the Trademark Act, 15 U.S.C. 1141k, an extension of
protection to the United States will be cancelled unless the holder of the
international registration periodically files affidavits of use in commerce
or excusable nonuse ("71 affidavit"). The affidavits must include (1) a
verified statement by the holder that the mark is in use in commerce,
and a specimen of use, or (2) a verified statement setting forth that any
nonuse is due to special circumstances which excuse such nonuse and is not
due to any intention to abandon the mark. These affidavits must be filed:
(1) Between the 5th and 6th year after the date on which the USPTO
issues the certificate of extension of protection; and
(2) Within the 6-month period preceding the end of every 10-year period
after the date on which the USPTO issues the certificate of extension of
protection, or within a 3-month grace period with an additional surcharge.
Section 71 provides a 3-month grace period for filing the 10-year 71
affidavit with an additional surcharge. There is no grace period for
filing the 6-year 71 affidavit. Unlike 8(c)(2) of the Trademark Act,
71 does not provide for correction of deficiencies after expiration of the
statutory filing period. The requirements for a 71 affidavit are set
forth in 37 C.F.R. 7.37.
Since the 71 affidavit cannot be filed until 5 years after the USPTO
registers an extension of protection, the USPTO will not accept these
affidavits until after November 2, 2008.
L. Incontestability
Under Section 73 of the Trademark Act, 15 U.S.C. 1141m, if the holder files
an affidavit that meets the requirements of Section 15 of the Trademark
Act, an extension of protection to the United States will become
"incontestable".
The USPTO will not accept these affidavits until after November 2, 2008.
M. Replacement
If a U.S. national registration and a subsequently issued certificate of
extension of protection to the United States are (1) owned by the same
person, (2) identify the same mark, and (3) list the same goods or
services, the extension of protection shall have the same rights as those
accrued to the U.S. national registration at the time the certificate of
extension of protection issues. 74 of the Trademark Act, 15 U.S.C.
1141n; Article 4bis of the Protocol; 37 C.F.R. 7.28(a).
Legally, replacement takes place automatically, by operation of law.
However, the USPTO will note the replacement in its records (and notify the
IB accordingly) only if the holder of a registered extension of protection
files a request that it do so. A request to note replacement of a U.S.
national registration with an extension of protection must include:
(1) The serial number or registration number of the extension of
protection to the United States;
(2) The registration number of the replaced U.S. registration; and
(3) The fee required by 37 C.F.R. 7.6.
See 37 C.F.R. 7.28(b).
The holder cannot file the request to note replacement of the U.S. national
registration until the registration based on the request for extension of
protection issues.
"Replacement" does not invalidate the U.S. national registration. The U.S.
national registration remains on the register, with all the rights
attaching to such a registration, so long as the holder renews the
registration under 9 of the Trademark Act and files the necessary
affidavits of use or excusable nonuse under 8 of the Trademark Act.
37 C.F.R. 7.29. It is up to the holder to decide whether to maintain the
replaced U.S. national registration.
N. Amendment of Registered Extension of Protection to the United States
All requests to record changes to an international registration must be
filed at the IB. Accordingly, the holder of a registered extension of
protection of an international registration to the United States cannot
file an amendment under 7 of the Trademark Act. The USPTO will not accept
an amendment of a registered extension of protection that has not been
recorded in the International Register. See section VI.A below regarding
requests to record changes at the IB.
V. RENEWAL OF INTERNATIONAL REGISTRATIONS
The term of an international registration is 10 years, and it may be
renewed for 10 years upon payment of the renewal fee. Articles 6(1) and
7(1) of the Protocol. Renewal of international registrations must be made
at the IB, in accordance with Article 7 of the Protocol and Common Regs.
29 - 31. There is a renewal form on the IB website at
http://www.wipo.int/madrid/en/.
The USPTO will not process a request to renew an international registration
nor forward it to the IB. 37 C.F.R. 7.41.
The IB notifies the Contracting Parties designated for extensions of
protection of renewal or non-renewal.
See section IV.J above regarding renewal of an extension of protection to
the United States.
VI. COMMUNICATIONS WITH INTERNATIONAL BUREAU REGARDING INTERNATIONAL
REGISTRATIONS
Information about communicating directly with the IB is available on the
WIPO website, currently at http://www.wipo.int/madrid/en/. The applicant
may contact the IB by mail to the World Intellectual Property Organization,
34 chemin des Colombettes, P.O. Box 18, CH-1211 Geneva 20, Switzerland; by
telephone at 41 22 338 9111; by fax to 41 22 740 1429; or by e-mail to
intreg.mail@wipo.int.
A. Recording Changes in International Register
Requests to record changes to an international registration must be filed
with the IB. Such requests are governed by Articles 9 and 9bis and Common
Reg. 25.
There are only two limited situations in which these requests may be filed
with the IB through the USPTO:
(1) an assignment that meets the requirements of 37 C.F.R. 7.23(a)
(see section VI.A.1 below); or
(2) a security interest or other restriction of a holder's right to
dispose of an international registration (or the release of such a
restriction) that meets the requirements of 37 C.F.R. 7.24(a) and (b) (see
section VI.A.2 below).
37 C.F.R. 7.22.
All other requests to record changes must be filed with the IB. There are
forms for filing requests to record changes on the IB website at
http://www.wipo.int/madrid/en/.
1. Change in Ownership of International Registration
The IB will record a change in ownership by assignment, merger, court
decision, or operation of law, at the request of the holder, the
Contracting Party of the holder, or an interested person (Article 9;
Common Reg. 25(1)(a)(i)). The change may relate to some or all of the
goods/services in some or all of the designated Contracting Parties. A fee
is required.
Most requests to record changes of ownership must be filed directly with
the IB. There is a form available on the IB website at
http://www.wipo.int/madrid/en/. The IB does not require copies of
assignments or other supporting documents.
The USPTO will accept for submission and forward to the IB a request to
record a change of ownership only if:
(1) the assignee cannot obtain the assignor's signature on the request
to record the change; and
(2) the assignee is a national of, is domiciled in, or has a real and
effective industrial or commercial establishment in the United States.
37 C.F.R. 7.23.
No other requests to record changes of ownership can be filed through the
USPTO. 37 C.F.R. 7.22 and 7.23.
A request to record a change of ownership filed through the USPTO must
include:
The international registration number;
The name and address of the holder of the international registration;
The name and address of the assignee of the international
registration;
A statement that the assignee: (i) is a national of the United States;
(ii) has a domicile in the United States; or (iii) has a real and effective
industrial or commercial establishment in the United States. Where an
assignee's address is not in the United States, the assignee must provide
the address of its U.S. domicile or establishment;
A statement that the assignee could not obtain the assignor's
signature for the request to record the assignment;
An indication that the assignment applies to the designation to the
United States;
A statement that the assignment applies to all the goods/services in
the international registration, or if less, a list of the goods/services in
the international registration that have been assigned that pertain to the
designation to the United States; and
The USPTO transmittal fee required by 37 C.F.R. 7.6 and the
international fee(s) required by the IB to record the assignment.
37 C.F.R. 7.23(a).
If the request meets the requirements of 37 C.F.R. 7.23(a), the USPTO will
forward it to the IB. 37 C.F.R. 7.23(b). If the request does not meet
these requirements, the USPTO will refuse to forward the request to the IB,
and will notify the holder of the reasons. The USPTO will not refund the
transmittal fee. 37 C.F.R. 7.23(c).
If a request to record a change sent through the USPTO is irregular, the IB
will notify both the USPTO and the holder. Common Reg. 26(1). The holder
must file a response to any notice of irregularity with the IB; the
response cannot be filed through the USPTO. 37 C.F.R. 7.23(d).
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to
assignments of an international registration. 37 C.F.R. 7.22.
The validity of a change in ownership with respect to a particular
Contracting Party is governed by the law of that Contracting Party. The
office of a designated Contracting Party may declare that a change in
ownership has no effect in its territory. The declaration must be sent to
the IB within 18 months of the date of IB's notification of the change.
Common Reg. 27(4).
2. Restriction of Holder's Rights of Disposal
Under Common Reg. 20(1)(a), the holder of an international registration or
the Contracting Party of the holder (i.e. a Contracting Party in which the
holder is a national, is domiciled, or has a real and effective business or
commercial establishment) may inform the IB that the holder's right to
dispose of the international registration has been restricted in whole or
in part. Under Common Reg. 20(1)(b), the Office of any designated
Contracting Party may inform the IB that the holder's right of disposal has
been restricted in the territory of that Contracting Party. Examples of
restrictions on the holder's right to dispose are security interests, and
court orders concerning the disposal of the assets of the holder.
The USPTO will accept for submission and forward to the IB a request to
record a restriction of a holder's right to dispose of an international
registration, or the release of such a restriction only if:
(1) (i) the restriction is the result of a court order; or (ii) the
restriction is the result of an agreement between the holder of the
international registration and the party restricting the holder's right of
disposal, and the signature of the holder of the international
registration cannot be obtained;
(2) the party who obtained the restriction is a national of, is
domiciled in, or has a real and effective industrial or commercial
establishment in the United States; and
(3) the restriction or release applies to the holder's right to dispose
of the international registration in the United States.
37 C.F.R. 7.23(a).
All other requests to record restrictions must be filed with the IB.
37 C.F.R. 7.22 and 7.24(a).
A request to record a restriction filed through the USPTO must include:
The international registration number;
The name and address of the holder of the international registration;
The name and address of the party who obtained the restriction;
A statement that the party who submitted the request: (i) is a
national of the United States; (ii) has a domicile in the United States; or
(iii) has a real and effective industrial or commercial establishment in
the United States. Where a party's address is not in the United States,
the party must provide the address of its U.S. domicile or establishment;
A statement that (i) the restriction is the result of a court order,
or (ii) where the restriction is the result of an agreement between the
holder of the international registration and the party restricting the
holder's right of disposal, a statement that the signature of the holder of
the international registration could not be obtained for the request to
record the restriction or release of the restriction;
A summary of the main facts concerning the restriction;
An indication that the restriction, or the release of the restriction,
of the holder's right of disposal of the international registration applies
to the designation to the United States; and
The U.S. transmittal fee required by 37 C.F.R. 7.6.
37 C.F.R. 7.24(b).
If the request meets the requirements of 37 C.F.R. 7.24(b), the USPTO will
forward it to the IB. 37 C.F.R. 7.24(c). If the request does not meet
these requirements, the USPTO will refuse to forward the request to the IB,
and will notify the holder of the reasons. The USPTO will not refund the
transmittal fee. 37 C.F.R. 7.24(d).
If a request to record a restriction sent through the USPTO is irregular,
the IB will notify both the USPTO and the holder. Common Reg. 26(1). The
holder must file a response to any notice of irregularity with the IB; the
response cannot be filed through the USPTO. 37 C.F.R. 7.24(e).
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to
restrictions of a holder's right to dispose of an international
registration. 37 C.F.R. 7.22.
3. Change of the Holder's Name or Address
A request to record a change of the holder's name or address must be filed
with the IB; it cannot be filed through the USPTO. There is a form on the
IB website at http://www.wipo.int/madrid/en/. Article 9bis; Common Reg.
25(2).
4. Change of Name or Address of Representative
A request to record a change of the representative's name or address must
be filed with the IB; it cannot be filed through the USPTO. There are
forms on the IB website at http://www.wipo.int/madrid/en/. See Common
Reg. 36(i).
The USPTO will accept a notice of change of the correspondence address in a
66(a) application or a registered extension of protection to the United
States, and will send correspondence to the new address. See section
IV.B.6 above. However, a change of the correspondence address in the USPTO
will not change the representative designated in the international
registration.
5. Limitation, Renunciation, Cancellation of International Registration
Requests to record a limitation, renunciation or cancellation of an
international registration must be filed with the IB; they cannot be filed
through the USPTO. There are forms on the IB website at
http://www.wipo.int/madrid/en/. Under Article 9bis, the holder may record
the following restrictions:
Limitation of the list of goods/services in some or all of the
Contracting Parties (Common Reg. 25(1)(a)(ii))
Cancellation in respect to all Contracting Parties for some or all
of the goods/services (Common Reg. 25(1)(a)(v))
Renunciation in respect to some but not all of the designated
Contracting Parties with respect to all the goods/services (Common Reg.
25(1)(a)(iii))
The office of a designated Contracting Party may declare that a limitation
has no effect in its territory, e.g., because it considers that the change
requested is an extension rather than a limitation. The declaration must
be sent to the IB within 18 months of the date of the IB's notification of
the limitation. Common Reg. 27(5).
6. Correction of Errors in International Registration
The IB will correct errors in an international registration at the request
of the holder or the Office of Origin. Common Reg. 28(1). Requests to
correct errors in international registrations in which the USPTO was the
Office of Origin must be filed directly with the IB.
The office of a designated Contracting Party may declare in a notification
of provisional refusal that protection can no longer be granted to an
international registration as corrected. A new refusal period under
Article 5 of the Protocol and Common Regs. 16-17 starts to run from the
date of the correction, but only in respect to grounds that did not exist
prior to the correction. Common Reg. 28(3).
7. Merger of International Registrations
Where the same party is the holder of two or more international
registrations of the same mark due to a partial change in ownership, the
party may request the IB to record a merger of the registrations. Common
Reg. 27(3). The request must be filed with the IB; it cannot be filed
through the USPTO.
8. License
Under Common Reg. 20bis(1), a holder may file a request to record a
license, a request for amendment of the recording of a license, or a
request for cancellation of the recording of a license. Requests to record
or cancel the recording of a license cannot be filed through the USPTO.
There are forms available on the IB website at
http://www.wipo.int/madrid/en/. A designated Contracting Party may declare
that the recording of a license has no effect in its territory. The
declaration must be sent within 18 months of the IB's notification of
recording of the license. Common Reg. 20bis(5).
9. No Other Changes Can Be Made
No other changes can be recorded in the International Register. See the
IB's Guide to International Registration, Para. B.II.69.01 (2002).
Mark in International Registration Cannot Be Changed. There is no
provision for a mark to be amended in any way, at any time, even if the
mark in the basic application or basic registration changes. Guide to
International Registration, Para. B.II.69.02 (2002).
Goods/Services in International Registration Cannot be Expanded. It is not
possible to expand the list of goods/services, even if the added
goods/services were listed in the basic application or registration. Guide
to International Registration, Para. B.II.69.03 (2002).
B. USPTO Will Receive Notices of Changes in International Registration
In a 66(a) application or registered extension of protection of an
international registration to the United States, the IB will notify the
USPTO of changes to the international registration, and the USPTO will
make note of this in its automated records. The USPTO may receive the
following notices from the IB:
Change of the holder's name or address
Change in Name or Address of Representative
Change in Ownership with respect to some or all of the goods/services
(Common Reg. 25(1)(a)(i)) (See section IV.F above regarding assignment of
an extension of protection to the United States.)
Limitation of the list of goods/services with respect to some or all
Contracting Parties (Common Reg. 25(1)(a)(ii))
Cancellation with respect to all Contracting Parties for some or all
of the goods/services (Common Reg. 25(1)(a)(v))
Renunciation of international registration with respect to some but
not all Contracting Parties for all the goods/services (Common Reg.
25(1)(a)(iii))
Correction of Errors in international registration (Common Reg. 28(2))
Merger of International Registrations (Common Reg. 27(3))
Division or Merger of Basic Application or Registration on which
international registration is based (Common Reg. 23)
License - recordation of license, amendment of the recording of a
license, or request for cancellation of the recording of a license
(Common Reg. 20bis)
Restriction of Holder's Right to Dispose of the international
registration, or of the removal of such a restriction (Common Reg. 20)
VII.DIVISION OF REGISTRATIONS
Effective November 2, 2003, a registrant may file a request that a
registration be divided into two or more separate registrations if
ownership of the registration has changed with respect to some but not all
of the goods and/or services. 37 C.F.R. 2.171(b).
The assignment must be recorded with the Assignment Services Division of
the USPTO. In the case of a registered extension of protection of an
international registration to the United States, the change of ownership
must be recorded with the IB before the change can be recorded in the
Assignment Services Division of the USPTO. 37 C.F.R. 7.22. See section
VI.A.1 above.
A fee is required for each new registration created by the division.
37 C.F.R. 2.6(a)(8).
The USPTO will issue a new registration certificate and send updated
registration certificates to the assignor and assignee.
A registration may be divided more than once.
In a 66(a) registration, when the IB notifies the USPTO of the division of
an international registration resulting from a partial change of ownership
of the international registration with respect to some of the goods or
services in the registered extension of protection to the United States,
the USPTO will record the partial change of ownership, divide out the
assigned goods or services from the registered extension of protection
(parent registration), issue an updated certificate for the parent
registration and publish notice of the parent registration in the Official
Gazette. The USPTO will not issue a new certificate for the child
registration or publish notice of the child registration until the assignee
files a request to divide under 2.171(b), and pays the required fee.