United States Patent and Trademark Office OG Notices: 19 October 2004
Madrid Protocol Rules Changes
The Madrid Protocol is an international treaty that allows a
trademark owner to seek registration in any of the countries and
organizations that have joined the Protocol ("Contracting Parties"),
by submitting a single international application. The international
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"), and must be
submitted to the IB through the trademark office of the Contracting
Party in which the basic application or registration is held ("Office
of Origin"). Before forwarding the international application to the
IB, the Office of Origin must certify that the information in the
international application corresponds to the information in the basic
application or registration.
The Madrid Protocol became effective in the United States on
November 2, 2003. The Madrid Protocol Implementation Act of 2002,
Public Law 107-273, 116 Stat. 1758, 1913-1921 ("MPIA") amended the
Trademark Act to provide that: (1) The owner of a U.S. application or
registration may seek protection of its mark in any of the countries and
organizations party to the Madrid Protocol by submitting a single
international application to the IB through the Office; and (2) the
holder of an international registration may request an extension of
protection of the international registration to the United States. A
notice of final rule making amending the Trademark Rules of Practice to
incorporate the MPIA was published at 68 FR 55748 (Sept. 26, 2003).
The rules required: (1) That filers use TEAS to submit
international applications, subsequent designations, responses to
notices of irregularity, requests to record changes in the
International Register, and requests for transformation; and (2) that
international fees required by the IB for international applications,
subsequent designations and requests to record changes in the
International Register be paid through TEAS at the time of submission.
Due to unforeseen technical difficulties, the deployment of Madrid-
related TEAS forms has been delayed. Therefore, these requirements of
the rules were temporarily waived in a notice published at 68 FR 74479
(Dec. 24, 2003). The Office is amending its rules to incorporate these
changes.
The Madrid Protocol, Common Regulations Under the Madrid Agreement
Concerning the International Registration of Marks and the Protocol
Relating to That Agreement (April 1, 2004) ("Common Regs."), and
Guide to International Registration (2004) ("Guide"), are available
on the IB's Web site, at http://www.wipo.int/madrid. The Common Regs.
are the procedures agreed to by the Contracting Parties, pursuant to
Madrid Protocol Article 10(2)(iii).
References below to "the Act," "the Trademark Act," or "the
statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051, et seq.,
as amended.
Discussion of Specific Rules
The Office is amending rules 2.190, 2.195, 2.197, 7.4, 7.7, 7.11,
7.14, 7.21, 7.23, 7.25, and 7.31.
The Office is revising Sec. 2.190(a) to set forth a new mailing
address for all paper-filed trademark-related correspondence (except
requests to record documents in the Assignment Services Division,
requests for copies of trademark documents, and certain documents filed
pursuant to the Madrid Protocol), and adding a new Sec. 2.190(e) to
set forth a new mailing address for the following Madrid-related paper-
filed documents: international applications under Sec. 7.11;
subsequent designations under Sec. 7.21; responses to notices of
irregularity under Sec. 7.14; requests to record changes in the
International Register under Sec. 7.23 and Sec. 7.24; requests for
transformation under Sec. 7.31; and petitions to the Director to
review an action of the MPU.
The Office is amending Sec. 2.195(d)(3) to delete the word "and"
after the semi-colon, and amending Sec. 2.195(d)(4) to replace the
period with a semi-colon and to add the word "and" after the semi-
colon.
The Office is adding a new Sec. 2.195(d)(5), to prohibit the use
of facsimile transmission to file international applications,
subsequent designations, responses to notices of irregularity, requests
for transformation, and requests to record changes in the International
Register.
The Office is revising Sec. 2.197(a)(2) to provide that the
certificate of mailing or transmission procedure described in Sec.
2.197(a)(1) does not apply to international applications, subsequent
designations, responses to notices of irregularity, requests for
transformation, and requests to record changes in the International
Register.
The Office is redesignating the current Sec. 7.4 as Sec. 7.4(a).
The Office is adding a new Sec. 7.4(b) to designate a new mailing
address for paper-filed international applications, subsequent
designations, responses to notices of irregularity, requests to record
changes in the International Register, requests for transformation, and
petitions to the Director to review an action of the MPU.
The Office is adding a new Sec. 7.4(b)(1), to provide that
international applications, subsequent designations, requests to record
changes in the International Register, and petitions to the Director to
review an action of the MPU, when filed by mail, will be accorded the
date of receipt in the Office, unless they are sent by Express Mail
pursuant to Sec. 2.198, in which case they will be accorded the date
of deposit with the United States Postal Service.
The Office is adding a new Sec. 7.4(b)(2), to provide that
requests for transformation and responses to notices of irregularity,
when filed by mail, will be accorded the date of receipt in the Office.
International applicants are advised that a response to a notice of
irregularity under Sec. 7.14 must be received at the IB before the end
of the response period set forth in the IB's notice. Receipt in the
Office does not satisfy this requirement. See Sec. 7.14(e); IB's Guide
at B.I.05.01.
The Office is adding a new Sec. 7.4(c) to designate a location for
hand delivery of international applications, subsequent designations,
responses to notices of irregularity, requests to record changes in the
International Register, requests for transformation, and petitions to
the Director to review an action of the MPU.
The Office is adding a new Sec. 7.4(d), to prohibit the use of
facsimile transmission to file international applications, subsequent
designations, responses to notices of irregularity, requests for
transformation, and requests to record changes in the International
Register.
The Office is adding a new Sec. 7.4(e), to provide that the
certificate of mailing or transmission procedure described in Sec.
2.197(a)(1) does not apply to international applications, subsequent
designations, responses to notices of irregularity, requests for
transformation, and requests to record changes in the International
Register. This is consistent with the revision to Sec. 2.197(a)(2),
discussed above.
The Office is revising Sec. 7.7(a) to provide that fees for
international applications, subsequent designations, and requests to
record changes of ownership may be paid to the IB through the Office
only when the documents are filed through TEAS. At present, the Office
is unable to process international fees for paper filings.
The Office is adding a new Sec. 7.7(c) to provide that all fees
for paper filings must be paid directly to the IB. These fees can be
paid to the IB either before or after submission of the document to the
Office. However, fees paid after the document is received by the IB
could result in a notice of irregularity.
The Office is redesignating Sec. 7.7(c) as Sec. 7.7(d).
The Office is revising Sec. 7.11(a) to remove the requirement that
an international application be filed through TEAS and to permit the
filing of an international application either through TEAS, or on the
official paper form issued by the IB, currently available on the IB's
Web site at http://www.wipo.int/madrid. Inasmuch as deployment of the
TEAS form has been delayed due to unforeseen technical difficulties,
international applications must be filed on paper until the TEAS form
is posted on the Office's Web site. When the TEAS form is posted,
applicants will have the option to file international applications
either on paper or through TEAS.
Revised Sec. 7.11(a) requires that an international application
filed on paper be presented on the official paper form issued by the
http://www.wipo.int/madrid. MM2 is the official IB form for an application
for international registration under the Madrid Protocol. The IB does not
accept paper applications that are not presented on the official IB
form. The form cannot be hand-written. Madrid Protocol Article 3(1);
Common Regs. 9(2)(a) and 11(4)(a)(i). When submitting an international
application on paper, applicants should complete the official form
online, print the completed form, and submit it to the Office. For
instructions on completing the IB's official international application
form, see the IB's Guide at B.II.07.01-20.11.
The Office is revising Sec. 7.11(a)(3) by breaking it into
subsections 7.11(a)(3)(i) through 7.11(a)(3)(iii), for purposes of
clarity.
The Office is adding a new Sec. 7.11(a)(3)(iv), to require, for
international applications filed on paper, that the depiction of the
mark appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8
cm) wide, and that the mark be placed in the box designated by the IB
on the IB's official form. This is required by Common Reg. 9(4)(a)(v).
The size requirement is consistent with the size requirement of Sec.
2.54(b).
The Office is revising Sec. 7.11(a)(9) to delete reference to fees
payable to the IB for international applications. These fees are
provided for in new Sec. 7.11(a)(10).
The Office is redesignating Sec. 7.11(a)(10) as Sec. 7.11(a)(11)
and revising it to provide that if an international application is
filed through TEAS, in order to be accorded a date of receipt in the
Office it must include the international application fees for all
classes, and the fees for all designated Contracting Parties identified
in the application. This requirement does not apply to international
applications filed on paper. Under new Sec. 7.7(c), international fees
for paper applications must be paid directly to the IB, and may be paid
either before or after submission of the international application to
the Office. However, fees paid after the international application is
received by the IB could result in a notice of irregularity. The
requirement in Sec. 7.11(a)(9) that the U.S. certification fee
required by Sec. 7.6 be paid at the time of submission in order to
obtain a date of receipt applies to both TEAS and paper applications.
The Office is redesignating Sec. 7.11(a)(11) as Sec. 7.11(a)(12),
and revising it to provide that an e-mail address for correspondence is
required only when the international application is filed through TEAS.
The inclusion of an e-mail address in paper applications is encouraged,
but not mandatory.
The Office is revising Sec. 7.14(e) to remove the requirement that
a response to a notice of irregularity issued by the IB be filed
through TEAS. Deployment of the TEAS form has been delayed due to
unforeseen technical difficulties. Until the TEAS form is available,
responses to notices of irregularity must be filed on paper. When the
TEAS form is operational, applicants will have the option to file
responses either on paper or through TEAS.
The Office is revising Sec. 7.21(b) to remove the requirement that
a subsequent designation be submitted through TEAS, and permit the
submission of a subsequent designation either through TEAS or on the
official paper form issued by the IB. Deployment of the TEAS form has
been delayed due to unforeseen technical difficulties. Until the TEAS
form is available, subsequent designations must be filed on paper. When
the TEAS form is posted, holders will have the option to file
subsequent designations either on paper or through TEAS.
Revised Sec. 7.21(b) requires that a subsequent designation filed
on paper be presented on the official paper form issued by the IB,
currently available on the IB's Web site at http://www.wipo.int/madrid.
MM4 is the official IB form for a designation subsequent to the
international registration under the Madrid Protocol. The IB does not
accept paper subsequent designations that are not presented on the
official IB form. The form cannot be hand-written. Madrid Protocol
Article 3ter(2); Common Reg. 24(2)(b). When submitting a
subsequent designation on paper, the holder should complete the
official form online, print the completed form, and submit it to the
Office. Completed subsequent designations may also be filed directly at
the IB. The IB's Guide contains instructions for completing the
subsequent designation form, at B.II.43.01-44.03.
The Office is revising Sec. 7.21(b)(7) to delete reference to
subsequent designation fees payable to the IB. These fees are provided
for in new Sec. 7.21(a)(8).
The Office is revising Sec. 7.21(a)(8) to provide that a
subsequent designation filed through TEAS must include the subsequent
designation fees payable to the IB in order to obtain a date of receipt
in the Office. This requirement does not apply to subsequent
designations filed on paper. Under new Sec. 7.7(c), fees for paper
subsequent designations must be paid directly to the IB, and may be
paid either before or after submission of the subsequent designation to
the Office. However, fees paid after the subsequent designation is
received by the IB could result in a notice of irregularity. The
requirement that the U.S. transmittal fee required by Sec. 7.6 be paid
at the time of submission in order to obtain a date of receipt remains
unchanged for paper subsequent designations.
The Office is redesignating Sec. 7.21(b)(8) as Sec. 7.21(b)(9),
and revising it to provide that an e-mail address for correspondence is
required only if the subsequent designation is filed through TEAS. The
inclusion of an e-mail address in a paper subsequent designation is
encouraged, but not mandatory.
The Office is revising Sec. 7.23(a)(8) to remove the requirement
that a request to record a change of ownership include the recording
fee required by the IB. The Office currently does not have an
electronic form available for requests to record changes of ownership,
and cannot process the international fees for paper filings. Therefore,
under Sec. 7.7(c), if a request to record a change of ownership is
submitted on paper, the fee must be paid directly to the IB, and may be
paid either before or after submission of the request to the Office.
However, fees paid after the request is received by the IB could result
in a notice of irregularity. The requirement that the U.S. transmittal
fee required by Sec. 7.6 be paid at the time the request is submitted
remains unchanged.
The Office is revising Sec. 7.25(a) to delete the designation of
Sec. 2.172 as a section of part 2 of this chapter that does not apply
to registered extensions of protection of international registrations
to the United States. This will allow parties to file requests to
surrender registered extensions of protection of an international
registration to the United States either directly with the IB or with
the Office. If the request to surrender is filed through the Office,
the Office will notify the IB of the surrender.
The Office is amending Sec. 7.31(a) to delete the requirement that
a request for transformation be filed through TEAS. The Office
currently does not have a TEAS form available for requests for
transformation. Until the TEAS form is available on the Office's Web
site, requests for transformation must be filed on paper. When the TEAS
form is operational, holders will be able to file requests for
transformation either on paper or through TEAS.
Rule Making Requirements
Administrative Procedure Act
This final rule merely involves rules of agency practice and procedure
within the meaning of 5 U.S.C. 553(b)(A), as it merely provides new mailing
addresses for certain trademark-related correspondence and eliminates
certain existing procedural requirements related to filings under the
Madrid Protocol that were waived pursuant to a notice published at 68
FR 74479 (Dec. 24, 2003) and incorporates agency procedure and practice
to implement the changes therein. Therefore, this final rule may be
adopted without prior notice and opportunity for public comment under 5
U.S.C. 553(b) and (c), or thirty-day advance publication under 5 U.S.C.
553(d).
Regulatory Flexibility Act
The changes in this final rule merely: (1) Set forth the mailing
addresses that should be used for mailing certain trademark-related
correspondence to the Office; and (2) incorporate agency procedures and
practice put in place to ensure compliance with a notice published at
68 FR 74479 (Dec. 24, 2003) eliminating certain existing requirements
for trademark-related filings under the Madrid Protocol. This final
rule package does not impose any new fees on members of the public, and
places no additional economic burden on large or small entities.
This final rule change is a rule of agency practice and procedure
under 5 U.S.C. 553(b)(A), and prior notice and an opportunity for
public comment therefore is not required pursuant to 5 U.S.C. 553(b)(A)
(or any other law). See Bachow Communications Inc. v. FCC, 237 F.3d
683, 690 (D.C. Cir. 2001) (rules governing an application process are
"rules of agency organization, procedure, or practice" and exempt
from the Administrative Procedure Act's notice and comment
requirement); Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38
USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated
under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2))
are not substantive rules (to which the notice and comment requirements
of the Administrative Procedure Act apply)); Fressola v. Manbeck, 36
USPQ2d 1211, 1215 (D.D.C. 1995) ("it is doubtful whether any of the
rules formulated to govern patent and trade-mark practice are other
than `interpretative rules, general statements of policy, * * *
procedure, or practice' " (quoting C.W. Ooms, The United States Patent
Office and the Administrative Procedure Act, 38 Trademark Rep. 149, 153
(1948). Thus, the provisions of the Regulatory Flexibility Act are not
applicable to this rule making.
Executive Order 13132
This rule making does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rule making has been determined not to be significant for
purposes of Executive Order 12866.
Paperwork Reduction Act
The final rules are in conformity with the requirements of the
Paperwork Reduction Act of 1995 ("PRA") (44 U.S.C. 3501 et seq.).
An information collection package supporting the information
requirements set forth in this rule was approved by the Office of
Management and Budget under 0651-0051. That information collection
package included a requirement that the following documents be
submitted electronically: international applications under Sec. 7.11,
subsequent designations under Sec. 7.21, responses to notices of
irregularity under Sec. 7.14, and requests for transformation under
Sec. 7.31. This final rule removes the requirement that these forms be
filed electronically, and instead permits filing either electronically
or on paper. The information to be provided on paper is the same
information as that collected by the electronic forms described in the
information collection package that was approved under 0651-0051.
These final rules require that international applications and
subsequent designations, when submitted on paper, be presented on the
official forms provided by the IB. The IB will not accept paper
international applications and subsequent designations that are not
presented on the official IB form. Madrid Protocol Article 3(1) and
3 ter (2); Common Regs. 9(2)(a), 11(4)(a)(i), and 24(2)(b). The IB's
paper forms collect the same information required in the electronic
forms approved under 0651-0051.
Neither the Office nor the IB provides a paper form for responses
to notices of irregularity or requests for transformation. The
applicant/holder must provide the same information required in the
electronic forms approved under 0651-0051, using the form of their
choice.
There are no other new information collection requirements in this
final rule.
The public reporting burden is estimated to average as follows:
Fifteen minutes for international trademark applications; three minutes
for subsequent designations; ten minutes for responses to notices of
irregularities issued by the IB; and five minutes for requests to
transform cancelled extensions of protection into applications for
registration under section 1 or 44 of the Trademark Act. These time
estimates include the time for reviewing instructions, searching
existing data sources, gathering and maintaining the data needed, and
completing and reviewing the collection of information. Comments are
invited on: (1) Whether the collection of information is necessary for
proper performance of the functions of the agency, (2) the accuracy of
the agency's estimate of the burden, (3) ways to enhance the quality,
utility, and clarity of the information to be collected, and (4) ways
to minimize the burden of the collection of information to respondents.
Send comments regarding this burden estimate, or any other aspect
of this data collection, including suggestions for reducing the burden,
to the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA
22202-3514 (Attn: Ari Leifman), and to the Office of Information and
Regulatory Affairs, OMB, 725 17th Street, NW., Washington, DC 20503
(Attn: USPTO Desk Officer).
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is
amending parts 2 and 7 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. Amend Sec. 2.190 by revising paragraph (a) and adding a new
paragraph (e) to read as follows:
Sec. 2.190 Addresses for trademark correspondence with the United
States Patent and Trademark Office.
(a) Trademark correspondence. In general. All trademark-related
documents filed on paper, except documents sent to the Assignment
Services Division for recordation, requests for copies of trademark
documents, and certain documents filed under the Madrid Protocol as
specified in paragraph (e) of this section, should be addressed to:
Commissioner for Trademarks, PO Box 1451, Alexandria, VA 22313-1451.
* * * * *
(e) Certain Documents Relating to International Applications and
Registrations. International applications under Sec. 7.11 of this
title, subsequent designations under Sec. 7.21 of this title,
responses to notices of irregularity under Sec. 7.14 of this title,
requests to record changes in the International Register under Sec.
7.23 and Sec. 7.24 of this title, requests for transformation under
Sec. 7.31 of this title, and petitions to the Director to review an
action of the Office's Madrid Processing Unit, when filed by mail, must
be mailed to: Commissioner for Trademarks, PO Box 16471, Arlington, VA
22215-1471, Attention MPU.
2. Amend Sec. 2.195 by revising paragraphs (d)(3) and (d)(4), and
adding a new paragraph (d)(5) to read as follows:
Sec. 2.195 Receipt of trademark correspondence.
* * * * *
(d) * * *
(3) Correspondence to be filed with the Trademark Trial and Appeal
Board, except notices of ex parte appeal;
(4) Requests for cancellation or amendment of a registration under
section 7(e) of the Trademark Act; and certificates of registration
surrendered for cancellation or amendment under section 7(e) of the
Trademark Act; and
(5) Madrid-related correspondence submitted under Sec. 7.11, Sec.
7.21, Sec. 7.14, Sec. 7.23, Sec. 7.24, or Sec. 7.31 of this title.
* * * * *
3. Amend Sec. 2.197 by revising paragraph (a)(2) to read as
follows:
Sec. 2.197 Certificate of mailing or transmission.
(a) * * *
(2) The procedure described in paragraph (a)(1) of this section
does not apply to:
(i) Applications for the registration of marks under 15 U.S.C. 1051
or 1126; and
(ii) Madrid-related correspondence filed under Sec. 7.11, Sec.
7.21, Sec. 7.14, Sec. 7.23, Sec. 7.24 or Sec. 7.31 of this title.
* * * * *
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
4. Revise Sec. 7.4 to read as follows:
Sec. 7.4 Receipt of correspondence.
(a) Correspondence Filed Through TEAS. Correspondence relating to
international applications and registrations and requests for extension
of protection submitted through TEAS will be accorded the date and time
on which the complete transmission is received in the Office based on
Eastern Time. Eastern Time means eastern standard time or eastern
daylight time, as appropriate.
(b) Correspondence Filed By Mail. International applications under
Sec. 7.11, subsequent designations under Sec. 7.21, responses to
notices of irregularity under Sec. 7.14, requests to record changes in
the International Register under Sec. 7.23 and Sec. 7.24, requests
for transformation under Sec. 7.31, and petitions to the Director to
review an action of the Office's Madrid Processing Unit, when filed by
mail, must be addressed to: Commissioner for Trademarks, P.O. Box
16471, Arlington, VA 22215-1471, Attn: MPU.
(1) International applications under Sec. 7.11, subsequent
designations under Sec. 7.21, requests to record changes in the
International Register under Sec. 7.23 and Sec. 7.24, and petitions
to the Director to review an action of the Office's Madrid Processing
Unit, when filed by mail, will be accorded the date of receipt in the
Office, unless they are sent by Express Mail pursuant to Sec. 2.198 of
this title, in which case they will be accorded the date of deposit
with the United States Postal Service.
(2) Responses to notices of irregularity under Sec. 7.14 and
requests for transformation under Sec. 7.31, when filed by mail, will
be accorded the date of receipt in the Office.
(c) Hand-Delivered Correspondence. International applications under
Sec. 7.11, subsequent designations under Sec. 7.21, responses to
notices of irregularity under Sec. 7.14, requests to record changes in
the International Register under Sec. 7.23 and Sec. 7.24, requests
for transformation under Sec. 7.31, and petitions to the Director to
review an action of the Office's Madrid Processing Unit, may be
delivered by hand during the hours the Office is open to receive
correspondence. Madrid-related hand-delivered correspondence must be
delivered to the Trademark Assistance Center, AE00C55, Madison East,
600 Dulany Street, Alexandria, VA 22313.
(d) Facsimile Transmission Not Permitted. The following documents
may not be sent by facsimile transmission, and will not be accorded a
date of receipt if sent by facsimile transmission:
(1) International applications under Sec. 7.11;
(2) Subsequent designations under Sec. 7.21;
(3) Responses to notices of irregularity under Sec. 7.14;
(4) Requests to record changes of ownership under Sec. 7.23;
(5) Requests to record restrictions of the holder's right of
disposal, or the release of such restrictions, under Sec. 7.24; and
(6) Requests for transformation under Sec. 7.31.
(e) Certificate of Mailing or Transmission Procedure Does Not
Apply. The certificate of mailing or transmission procedure provided in
Sec. 2.197 does not apply to the documents specified in paragraph (d)
of this section.
5. Amend Sec. 7.7 by revising paragraph (a) introductory text,
redesignating paragraph (c) as paragraph (d), and adding a new
paragraph (c) to read as follows:
Sec. 7.7 Payments of fees to International Bureau.
(a) For documents filed through TEAS, the following fees may be
paid either directly to the International Bureau or through the Office:
* * * * *
(c) All fees for paper filings must be paid directly to the
International Bureau.
(d) The International Bureau fee calculator may be viewed on the
web site of the World Intellectual Property Organization, currently
available at: http://www.wipo.int/madrid/en/.
6. Amend Sec. 7.11 by revising paragraphs (a), introductory text
(a)(3), (a)(9), (a)(10) and (a)(11), and adding a new paragraph (a)(12)
to read as follows:
Sec. 7.11 Requirements for international application originating from
the United States.
(a) The Office will grant a date of receipt to an international
application That is either filed through TEAS, or typed on the official
paper form issued by the International Bureau. The
international application must include all of the following:
* * * * *
(3) A reproduction of the mark that is the same as the mark in the
basic application and/or registration and that meets the requirements
of Sec. 2.52 of this title.
(i) If the mark in the basic application and/or registration is
depicted in black and white and the basic application or registration
does not include a color claim, the reproduction of the mark in the
international application must be black and white.
(ii) 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.
(iii) If the mark in the basic application and/or registration is
depicted in color, the reproduction of the mark in the international
application must be in color.
(iv) If the international application is filed on paper, the mark
must be no more than 3.15 inches (8 cm) high by 3.15 inches (8 cm)
wide, and must appear in the box designated by the International Bureau
on the International Bureau's official form;
* * * * *
(9) The certification fee required by Sec. 7.6;
(10) If the application is filed through TEAS, the international
application fees for all classes, and the fees for all designated
Contracting Parties identified in the international application (see
Sec. 7.7);
(11) A statement that the applicant is entitled to file an
international application in the Office, specifying that applicant: is
a national of the United States; has a domicile in the United States;
or 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 its U.S. domicile or
establishment; and
(12) If the international application is filed through TEAS, an e-
mail address for receipt of correspondence from the Office.
* * * * *
7. Amend Sec. 7.14 by revising paragraph (e) to read as follows:
Sec. 7.14 Correcting irregularities in international application.
(a) * * *
(e) Procedure for response. To be considered timely, a response
must be received by the International Bureau before the end of the
response period set forth in the International Bureau's notice. Receipt
in the Office does not fulfill this requirement. Any response submitted
through the Office for forwarding to the International Bureau should be
submitted as soon as possible, but at least one month before the end of
the response period in the International Bureau's notice. The Office
will not process any response submitted to the Office after the
International Bureau's response deadline.
8. Amend Sec. 7.21 by revising paragraphs (b) introductory text,
(b)(7), and (b)(8), and adding a new paragraph (b)(9), to read as
follows:
Sec. 7.21 Subsequent designation.
* * * * *
(b) The Office will grant a date of receipt to a subsequent
designation that is either filed through TEAS, or typed on the official
paper form issued by the International Bureau. The subsequent
designation must contain all of the following:
* * * * *
(7) The U.S. transmittal fee required by Sec. 7.6;
(8) If the subsequent designation is filed through TEAS, the
subsequent designation fees (see Sec. 7.7); and
(9) If the subsequent designation is filed through TEAS, an e-mail
address for receipt of correspondence from the Office.
* * * * *
9. Amend Sec. 7.23 by revising paragraph (a)(8) to read as
follows:
Sec. 7.23 Requests for recording assignments at the International
Bureau.
* * * * *
(a) * * *
(8) The U.S. transmittal fee required by Sec. 7.6.
* * * * *
10. Amend Sec. 7.25 by revising paragraph (a) to read as follows:
Sec. 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for Sec. Sec. 2.130-2.131, 2.160-2.166, 2.168, 2.173,
2.175, 2.181-2.186, and 2.197, all sections in part 2 of this chapter
and all sections of part 10 of this chapter 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.
* * * * *
11. Amend Sec. 7.31 by revising paragraph (a) introductory text to
read as follows:
Sec. 7.31 Requirements for transformation of an extension of
protection to the United States into a U.S. application.
* * * * *
(a) The holder of the international registration must file a
request for transformation within three months of the date of
cancellation of the international registration and include:
* * * * *
September 17, 2004 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office