The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) is an international treaty that allows a trademark owner to seek registration in any of the countries or intergovernmental organizations that have joined the Madrid Protocol by submitting a single application, called an international application. The international registration system is administered by the International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”), in Geneva, Switzerland.

The Madrid Protocol became effective in the United States on November 2, 2003. The Madrid Protocol Implementation Act of 2002, Pub. L. 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 or intergovernmental organizations party to the Madrid Protocol, by submitting a single international application to the IB through the United States Patent and Trademark Office (“USPTO”); 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 rulemaking amending the Trademark Rules of Practice to incorporate the MPIA was published at 68 Fed. Reg. 55748 (Sept. 26, 2003). A notice of final rulemaking amending some of the rules governing the submission of documents under the Madrid Protocol was published at 69 Fed. Reg. 57181 (Sept. 24, 2004). See correction notice published at 69 Fed. Reg. 63320 (Nov. 1, 2004).

The Madrid Protocol, Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”), Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (“Guide to International Registration”), Administrative Instructions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto (“Admin. Instrs.”) are 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 Madrid Protocol Article (“Article”) 10(2)(iii).

1901 Overview of the Madrid System of International Registration

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 Madrid 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 one or more trademark application(s) filed in, or registration(s) issued by, the trademark office of one of the Contracting Parties (“basic application(s)” or “basic registration(s)”). 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, and then forward the international application to the IB. If the IB receives the international application within two months of the date of receipt in the Office of Origin, the date of the international registration is the date of receipt in the Office of Origin. If the IB does not receive the international application within two months of the date it was received by the Office of Origin, the date of the international registration is the date on which the international application is received by the IB. See TMEP §1902.04 for information regarding filing requirements that may affect the international registration date.

The international registration is dependent on the basic application or registration for five years from the international registration date. 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 accordingly. See TMEP §1902.09 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 subsequent designation will examine the request for extension of protection as a national trademark application under its domestic laws. Under Article 5 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 refuse a request for 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 ending in or a registration issued by the USPTO. See

TMEP §§1902 et seq.

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

TMEP §§1904 et seq.

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

TMEP §1906.01(a)(i)) and restrictions on the holder’s right to dispose of an international registration (see TMEP §1906.01(b)). The expression “Contracting Party of the Holder” includes the “Office of Origin,” as well as any other Contracting Party in which a holder is a national, is domiciled, or has a real and effective industrial or commercial establishment. Common Reg. 1(xxvi^bis).

1902 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 TMEP §§1904 et seq. for information about requests for extension of protection to the United States by the holder of an international registration originating in another country. International applications originating from the United States are processed by the USPTO’s Madrid Processing Unit (“MPU”).

1902.01 Who Can File

Under 15 U.S.C. §1141a and Article 2(1), a qualified owner of a basic application pending in the USPTO or a qualified owner of a basic registration issued 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 at least one of these requirements. Common Reg. 8(2).

1902.02 Minimum Requirements for Date of Receipt of International Application in USPTO

The minimum requirements for accordance of a date of receipt of an international application in the USPTO are set forth in 37 C.F.R. §7.11.

§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:

(1) The filing date and serial number of the basic application and/or the registration date and registration number of the basic registration;

(2) The name of the international applicant that is identical to the name of the applicant or registrant as it appears in the basic application or basic registration and applicant’s current address;

(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 §2.52.

(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;

(4) A color claim as set out in §7.12, if appropriate;

(5) A description of the mark that is the same as the description of the mark in the basic application or registration, as appropriate;

(6) An indication of the type of mark if the mark in the basic application and/or registration is a three-dimensional mark, a sound mark, a collective mark or a certification mark;

(7) A list of the goods and/or services that is identical to or narrower than the list of goods and/or services in each claimed basic application or registration and classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;

(8) A list of the designated Contracting Parties. If the goods and/or services in the international application are not the same for each designated Contracting Party, the application must list the goods and/or services in the international application that pertain to each designated Contracting Party;

(9) The certification fee required by §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 §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.

(b) For requirements for certification, see §7.13.

1902.02(a) Form of International Application

Trademark Rule 7.11(a), 37 C.F.R. §7.11(a), requires that an international application be filed either through the Trademark Electronic Application System (“TEAS”), or on the official paper form issued by the IB.

TEAS Form

TEAS will require the applicant to select between two different forms, a prepopulated form or a free-text form. The applicant should use the prepopulated form if: (1) the international application is based on a single basic application or registration; and (2) applicant’s changes to the international application are limited to:

Narrowing the list of goods or services;
Changing the classification;
Changing the applicant’s address; and/or
Attaching a color reproduction of the mark where the mark in the basic application or registration is in black and white with a color claim (see TMEP §1902.02(d)).

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. However, if the international application is based on a newly filed application that has not yet been uploaded into the trademark database, the TEAS form will instruct the applicant to either wait for the USPTO to upload the data or use the free-text form. It normally takes 48 to 72 hours for the USPTO to upload a newly filed application. To determine whether the basic application data has been entered, the applicant should check the Trademark Applications and Registrations Retrieval (“TARR”) database on the USPTO website at: http://tarr.uspto.gov.

The free-text form should be used if an applicant wishes to change other data in the international application, or if the international application is based on more than one basic application or registration.

Paper Form

When filing on paper, applicants must submit the official international application form issued by the IB, the MM2 form, to the USPTO. This form is available on the IB website at http://www.wipo.int/madrid/en/. The IB will not accept paper applications that are not presented on the official IB form. The form cannot be handwritten. Article 3(1); Common Regs. 9(2)(a) and 11(4)(a)(i); Madrid Admin. Instr. §2(b). The applicant should complete the MM2 form online, print the completed form, and submit it to the USPTO by mail.

The completed paper application form must be mailed to the following address:

Madrid Processing Unit

600 Dulany Street

MDE-7B87

Alexandria, Virginia 22314-5793

37 C.F.R. §§2.190(e) and 7.4(b). International applications may be delivered by hand or courier to the Trademark Assistance Center (“TAC”), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. 37 C.F.R. §7.4(c). TAC is open 8:30 a.m. to 8:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.

If an international application is mailed to the USPTO via the Express Mail Service of the United States Postal Service (“USPS”), the USPTO will deem that the application was received in the USPTO on the day it was deposited with the USPS, provided that the applicant complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding submission of documents by Express Mail. The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 do not apply to international applications. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).

The IB’s Guide to International Registration contains instructions for completing the international application form.

The applicant should include a self-addressed, stamped postcard with the international application. Upon receipt of the international application, the USPTO will place a control number and a label indicating the receipt date on the papers and return the postcard to the applicant. The applicant should reference the control number whenever contacting the USPTO about the application.

International applications cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(1).

1902.02(b) 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). The USPTO will not certify the international application if this information is incorrect or is omitted.

The international application must be based on an active application or registration. It cannot be based on an abandoned application, or on a cancelled or expired registration.

An international application may be based on multiple basic applications and/or basic registrations. The relevant dates and numbers of each application and/or registration must be included. The USPTO will not certify the international application if any of this information is incorrect or is omitted.

If a basic application or registration has been divided, each serial number and/or registration number must be identified. See TMEP §§1110 et seq. regarding division of U.S. applications and TMEP §§1615 et seq. regarding division of U.S. registrations.

1902.02(c) Name and Address of Applicant

Only the owner of the basic application or registration can file an international application. 15 U.S.C. §1141a(a). The 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).

On the prepopulated TEAS 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 record for the basic application or registration.

When the applicant submits a paper form or a free-text TEAS form, an MPU trademark specialist will check the Trademark Reporting and Monitoring (“TRAM”) 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 not identical, the trademark specialist will check the Assignment Services Branch’s database to determine whether an assignment or other document affecting title that is not reflected in TRAM has been recorded in the Assignment Services Branch. 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 trademark specialist 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 faster than assignments filed on paper. If there is an unrecorded change in ownership, and the international applicant does not use ETAS to record the change, the USPTO may be unable 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. See TMEP §1902.04.

Applicants can search the Assignment Services Branch’s database at http://assignments.uspto.gov/assignments/ to determine whether an assignment or other document of title has been recorded, and can search the TARR database at http://tarr.uspto.gov/, to determine whether the ownership information in the Trademark databases has been updated. See TMEP §§504 et seq. regarding automatic updating of ownership information in the TRAM and TARR databases.

If an international applicant is relying on an assignment (or other document transferring title) that has recently been filed for recordation but has not yet been recorded in the Assignment Services Branch, the applicant should include a copy of the assignment with the international application.

If an international application is denied certification because the applicant is not the same party as the owner named in the basic application(s) and/or registration(s), the applicant may petition the Director to review the refusal to certify. See TMEP §1902.03(a) regarding petitions to review refusal to certify.

1902.02(d) 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).

For paper filers, the mark must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide and must be placed in the box designated by the IB on the MM2 form. 37 C.F.R. §§2.52(d) and 2.54(b); Common Reg. 9(4)(a)(v); Guide to International Registration, Paras. B.II.14.01 et seq. (2004) For international applications filed electronically, an image of the mark taken from TRAM will appear automatically on the prepopulated TEAS form. If an applicant uses the free-text TEAS form, the applicant must either 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).

Standard Character Reproductions. If the mark in the basic application or registration is in standard characters, the reproduction of the mark in the international application must be in standard characters. To claim standard characters, an applicant must check the appropriate box on the IB’s official application form MM2, or on the TEAS form. The applicant may not claim standard characters in the international application unless the mark in the basic application or registration is in standard character (or typed) format. See TMEP §§807.03 et seq. for information about standard character drawings in applications for registration of marks in the United States. The USPTO’s standard character chart is posted on the USPTO website at http://teas.uspto.gov/standardCharacterSet.html.

Special Form Reproductions. If the mark in the basic application or registration is in special form, the reproduction of the mark in the international application must be in special form.

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. See TMEP §1902.02(e) regarding color claims. 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 the basic application or registration 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 37 C.F.R. §2.52. 37 C.F.R. §7.11(a)(3); Common Reg. 9(4)(a)(vii). For example, if the basic application or registration includes a color claim and a black-and-white drawing that depicts the color by the use of color lining or by a statement describing the color, the applicant must include both a color reproduction of the mark showing the claimed colors and a black-and-white reproduction of the mark that corresponds to the mark as it appears in the basic registration. See the note regarding color drawings in United States basic applications or registrations in TMEP §1902.02(e). If filing on paper, the applicant must place the drawings in the appropriate boxes designated by the IB on the MM2 form. If using the TEAS prepopulated form, the black-and-white drawing will automatically prepopulate the form, and the applicant must attach the color reproduction of the mark. For the TEAS free-text form, however, the applicant must attach a digitized image of both the black-and-white reproduction of the mark and the color reproduction of the mark. See TMEP §§807 et seq. for general information about the requirements for drawings in applications for registration of marks in the United States.

1902.02(e) 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. §§7.11(a)(4) and 7.12(a).

If the basic application or registration includes a black-and-white reproduction of the mark with a description of the mark indicating that color is used on the mark, or a reproduction that is lined for color (see Note below), 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.” Thus, the basic application or registration will be presumed to have a color claim.

If color is not claimed as a feature of the mark in the basic application and/or registration, an applicant may not claim color as a feature of the mark in the international application. 37 C.F.R. §7.12(b).

Note Regarding Color Drawings in United States Basic Applications or Registrations: Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark had to submit a black-and-white drawing, with a statement identifying the color(s) and describing where they appeared in the mark. Alternatively, the applicant could submit a black-and-white drawing that showed color by using a lining system that previously appeared in 37 C.F.R. §2.52 but was deleted from the rule effective October 30, 1999. See notice at 64 Fed. Reg. 48900, 48903 (Sept. 8, 1999) and 1226 TMOG 103, 106 (Sept. 28, 1999). It was presumed that color was claimed as a feature of the mark, unless the applicant specifically stated that no claim was made to color, or that color was not claimed as a feature of the mark. The USPTO began accepting color drawings on November 2, 2003. Effective November 2, 2003, the Office no longer accepts black-and-white drawings with a color claim, or drawings that show color by use of lining patterns. 37 C.F.R. §2.52(b)(1). See TMEP §§807.07 et seq. regarding the current color requirements.

1902.02(f) 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). If the applicant makes any change that broadens the scope of the identification of goods/services, the USPTO will not certify the international application.

The prepopulated TEAS form will include the listing of goods/services in the USPTO’s electronic records for the basic application or registration as of the time the form is generated. An applicant may edit the list of goods/services by either deleting particular goods/services or revising the wording in the identification. On the MM2 paper form and the free-text TEAS form, the applicant must enter the goods/services manually and may omit goods or services, or revise the wording in the identification.

If the list of goods/services in an international application is not identical to the list of goods/services in the basic application or registration at the time the international application is reviewed, the MPU trademark specialist must determine whether the applicant has identified any goods/services that are broader than the goods/services covered in the basic application or registration.

When the MPU trademark specialist reviews an international application based on a basic application or registration that has been amended during the course of its examination, the list of goods/services in the international application must be within the scope of the goods/services in the basic application/registration as amended, and not as set forth in the original basic application/registration.

1902.02(g) Classification in International Applications

The goods/services should be classified according to the version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) that is in effect as of the filing of the international application. 37 C.F.R. §7.11(a)(7). Both the prepopulated and the free-text TEAS forms will allow an applicant to change the classification of goods/services in an international application.

The MPU does not certify classification of the goods/services in an 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. However, 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 in response to specific inquiries regarding the reclassification of particular goods/services. The IB provides guidance on its website, at http://www.wipo.int/classifications/en/. See TMEP §§1401.02 et seq. for further information about the international classes, and TMEP §§1902.07 et seq. for further information about irregularities in the international application.

1902.02(g)(i) Reclassifying Goods/Services

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) (see TMEP §1902.02(g)(ii)), or are classified in other classes under the old U.S. classification system (see TMEP §1401.02), it is advisable to reclassify the goods/services into international classes in the international application. Applicants using the prepopulated TEAS form will have to reclassify goods or services in Classes A, B or 200, or other U.S. classes, into international classes because the form does not recognize these class designations.

In addition, if the identification of goods in the basic application or registration comprises kits or gift baskets (see TMEP §1902.02(g)(iii)), 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.

In the situations discussed below, it is advisable for the international applicant to reclassify the goods/services in the international application, in order to avoid issuance of a notice of irregularity by the IB.

1902.02(g)(ii) United States Classes A, B & 200

Classes A, B, & 200 are classes from the old United States 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.

Amendment of the classification in the corresponding basic U.S. application or registration is not permitted.

United States Classes A & B

It has been the longstanding practice in the United States to accept identifications of goods or services for Classes A, B and 200 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 such situations, the U.S. applicant should specify the type of electrical equipment that is being certified, and either apply 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 from U.S. Classes A and B.

United States 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.

1902.02(g)(iii) 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 the goods into their respective classes and to pay additional fees for added classes. To avoid issuance of a notice of irregularity by the IB, 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.

1902.02(h) 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.

An international applicant designating the European Community for an extension of protection may claim seniority of one or more earlier registrations in or for a Member State of the European Community for the same mark covering the same goods or services in the international application. Common Reg. 9(5)(g)(i).

For international applications filed through TEAS, the online form enables applicants designating the European Community to claim seniority based upon registrations issued by Member States. The applicant must indicate: (1) the name of the Member State in or for which the earlier mark is registered; (2) the date from which the registration was effective; (3) the registration number; and (4) the goods and/or services covered by the earlier registration. Common Reg. 9(5)(g)(i).

For international applications filed on paper using form MM2, a claim of seniority must be presented on the IB’s official form, MM17, and annexed to the international application. Common Reg. 9(5)(g)(i). The applicant must complete both the MM2 and the MM17 forms, and mail them to the USPTO.

An international applicant may not designate the United States as a Contracting Party. 15 U.S.C. §1141e(b); Article 3^bis; TMEP §1904.01(h).

1902.02(i) Fees

USPTO Certification Fee. An international application must include the USPTO certification fee for each class of goods/services for which international registration is sought, or it will not be certified. The certification fee per class increases if the international application is based on more than one basic application or registration. 37 C.F.R. §§7.6(a) and 7.11(a)(9).

International Fees. If an international application is submitted through TEAS, the international fees for all classes and all designated Contracting Parties must be paid at the time of submission. 37 C.F.R. §7.11(a)(10). International fees for paper applications must be paid directly to the IB, and may be paid either before or after the international application is submitted to the USPTO. 37 C.F.R. §7.7(c). However, international fees paid after the IB receives the international application could result in a notice of irregularity issued by the IB (see TMEP §1902.07(b)(i)). Applicants filing on paper may submit a bank check for the international fees in Swiss francs made payable to the IB with the international application. If the international application meets the requirements for certification, the USPTO will forward the check with the international application to the IB. If the USPTO denies certification, the check will be returned with the international application to the applicant.

See also TMEP §1903.02 regarding payment of international fees.

1902.02(j) 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 United States domicile or establishment. 15 U.S.C. §1141a; 37 C.F.R. §7.11(a)(11).

For joint applicants, the application must include a statement of entitlement for each applicant.

1902.02(k) Description of Mark

If the basic application or registration includes a description of the mark, an international application must include the same description. 37 C.F.R. §7.11(a)(5). The applicant cannot include a description of the mark in the international application if the basic application or registration does not contain a description of the mark. Guide to International Registration, Para. B.II.15.07 (2004).

If an international application is based on more than one basic application or registration, any description of the mark must be the same in each basic application and/or registration. If the descriptions are not the same, certification will be denied. 37 C.F.R. §§7.11(a)(5) and 7.13(a).

If the basic application has been amended during the course of its examination, the description in the international application must be identical to the description in the basic application as amended, not as set forth in the original basic application.

1902.02(l) Indication of 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, international application must include an indication of the type of mark. 37 C.F.R. §7.11(a)(6). Such an indication may be given only if it appears in the basic application or registration. Common Regs. 9(4)(viii)-(x).

1902.02(m) E-Mail Address

An international application must include an e-mail address for receipt of correspondence from the USPTO, if the international application is filed through TEAS. 37 C.F.R. §7.11(a)(12). Applicants submitting international applications on paper are encouraged to include an e-mail address on the form.

1902.03 Certification of International Application in USPTO

If the information contained in an 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. 15 U.S.C. §1141b.

If an applicant uses the prepopulated TEAS form without changing any of the information (see TMEP §1902.02(a)), the international application will be certified and forwarded to the IB without review by the MPU. In all other cases, an MPU trademark specialist must review the data in the international application before it can be certified.

Under Article 3(1) 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)(vii^bis) 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 the international application meets the requirements of 37 C.F.R. §7.11(a), the USPTO will certify the application and send it to the IB. 37 C.F.R. §7.13(a). The MPU will send a notice of certification to the applicant.

If the application does not meet the requirements of 37 C.F.R. §7.11(a), the USPTO will not certify the application, or forward it to the IB. The USPTO will notify the applicant of the reason(s) why the application cannot be certified. The USPTO will refund any international fees paid through TEAS. The USPTO certification fee will not be refunded. 37 C.F.R. §7.13(b).

An applicant should periodically check the status of the international application online, using TARR. If the applicant does not receive a notice of certification or refusal within two months of filing, the applicant should contact the MPU. However, once an international application is certified and forwarded to the IB, questions concerning the international application should be directed to the IB rather than the USPTO. See TMEP §1906 for information on contacting the IB. The USPTO will update TARR when the IB issues a certificate of international registration or a notice of irregularity concerning the international application. See TMEP §1902.06 regarding the IB’s examination of international registrations.

1902.03(a) Petition to Review Refusal to Certify

If an applicant believes that a refusal to certify an international application was erroneous, the applicant may file a petition to the Director to review the refusal. The petition should refer to the USPTO control number, and include the petition fee required by 37 C.F.R. §2.6. If the denial of certification was due to USPTO error, the USPTO will grant the petition and refund the petition fee. In all other cases, whether the petition is granted or denied, the petition fee is not refundable unless the petition is withdrawn before a decision issues. The petition should be filed immediately. If the international application is not certified within two months of the date of receipt of the application in the USPTO, the date of international registration will be affected. Article 3(4); Common Reg. 15. See TMEP §1902.04.

The petition should be mailed to:

Madrid Processing Unit

600 Dulany Street

MDE-7B87

Alexandria, Virginia 22314-5793

37 C.F.R. §§2.190(e) and 7.4(b). If the applicant is paying the petition fee using a USPTO deposit account, the applicant may e-mail the request to madridpetitions@uspto.gov, with an authorization to charge the petition fee to a deposit account. See TMEP Chapter 1700 for further requirements for petitions to the Director.

The applicant can also hand-deliver the petition to the Trademark Assistance Center at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention MPU. TAC is open 8:30 a.m. to 8:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).

1902.04 Date of International Registration

If the IB receives an international application within two months of the date of receipt in the USPTO, the date of the international registration is the date of receipt in the USPTO. If the IB does not receive the international application within two months of the date of receipt in the USPTO, the date of the international registration is 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 two 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 two months of the date of receipt of the international application in the USPTO, the date of the international registration is 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 TMEP §§1902.07 et seq. for information about correcting irregularities in an international application.

1902.05 IB Requirements for Complete International Application

The requirements for an international application are set forth in Article 3 and Common Reg. 9. If the application meets the minimum requirements set forth in 37 C.F.R. §7.11(a) (see TMEP §§1902.02 et seq.), the USPTO will certify the application and send it to the IB. The USPTO will not examine the international application to determine whether it is complete. Only 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(s) and filing date(s) of the basic application(s), or the registration number(s) and registration date(s) 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: (1) is a national of the United States; (2) is 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 or 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));
Contracting Parties. The names of the Contracting Party or Parties in which an applicant seeks protection (Common Reg. 9(4)(a)(xv));
Declaration of Intent to Use. A verified statement that 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;
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 depicted in black and white, but contains a claim of color as a feature of the mark, the applicant must submit both (1) a black-and-white image that is the same as the mark in the basic application or registration; and (2) a color reproduction depicting the color(s) claimed. Common Reg. 9(4)(a)(vii);
Color. If color is claimed as a distinctive feature of the mark in the basic application or registration, 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 a color or a combination of colors, the international application must include a statement to that effect (Common Reg. 9(4)(a)(vii^bis)) (see TMEP §§1202.05 et seq. regarding color as a 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));
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);
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);
Indication of Second Language. If an applicant designates the European Community as a Contracting Party, applicant is required to indicate a second language, in addition to the language in the international application (Common Reg. 9(5)(g)(i)).

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 an applicant wishes to disclaim any element of the mark, the applicant may do so (Common Reg. 9(4)(b)(v));
Representative. See TMEP §1902.11;
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. Madrid Protocol Article 4(2); Common Regs. 9(4)(a)(iv) and 14(2)(i). 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. NOTE: If the applicant is claiming priority based upon the basic application, the applicant must list the United States application serial number and filing date in both the “Basic Application” and the “Priority Claimed” sections of the form;
Seniority. An applicant designating the European Community may claim seniority of one or more earlier registrations in or for a Member State of the European Community for the same mark covering the same goods or services in the international application by indicating the following four elements: (1) each Member State in or for which the earlier mark is registered; (2) the date from which the registration was effective; (3) the registration number; and (4) the goods/services covered by the earlier registration (Common Reg. 9(5)(g)(i)). For international applications submitted on paper using the IB’s official form MM2, this information must be submitted on the IB’s official MM17 form. The MM17 form should be annexed to the international application form.

1902.06 Examination of Application by IB

Upon certification, the USPTO forwards the international application to the IB. If the international application meets the applicable requirements (see TMEP §1902.05), the IB will immediately register the mark and publish the registration in the WIPO Gazette of International Marks. The IB will send the certificate to the holder and notify 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). If an international application is unacceptable, the IB will notify both the applicant and the USPTO of the “irregularity” (see TMEP §§1902.07 et seq.)

1902.07 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 trademark specialists review all incoming notices of irregularities. If the irregularity is one that must be remedied by the USPTO (see TMEP §1902.07(a)), the trademark specialist will respond to the notice and send the applicant a copy of the response.

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 the applicant, because the IB has already notified the applicant of the irregularity. A copy of the notice will be placed in the electronic record of the international application file. The notice can be reviewed using the Trademark Document Retrieval system on the USPTO website, by entering the U.S. Reference Number.

Applicants must file responses to irregularities in classification and identification of goods/services through the USPTO (see TMEP §§1902.07(c) et seq.). Fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency (see TMEP §1902.07(b)(i)). Responses to all other types of irregularities may be filed either directly at the IB or 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 of the response in the USPTO does not satisfy this requirement.

For responses to IB notices of irregularities that may be submitted through the USPTO, applicants may file the response either through TEAS or on paper. When correcting irregularities through the USPTO, the applicant should submit the response as soon as possible, and 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 filed after the IB response deadline. 37 C.F.R. §7.14(e). See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.

1902.07(a) Irregularities that Must Be Remedied by the USPTO

The following irregularities must be remedied by the USPTO within three months of the date of notification of the irregularity:

Application is not presented on the official form or is not typed (Common Reg. 11(4)(a)(i); Guide to International Registration, Para. B.II.25.03(a) (2004));
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).

If the USPTO does not cure the irregularity within three 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 trademark specialist will send the applicant a copy of the response.

1902.07(b) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB

1902.07(b)(i) Fee Irregularities

Where international fees for the international application are insufficient, the IB will notify both the applicant and the USPTO of the deficiency. The USPTO will not respond to the notice on behalf of applicant even if the international application fees were paid through TEAS.

Fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency, even if the applicant is filing a response to correct other irregularities through the USPTO. 37 C.F.R. §7.14(c). If any fees for correcting irregularities are submitted to the USPTO, the USPTO will return the fees to the applicant. The USPTO will not forward the fees to the IB. If the fees are not received by the IB on or before the deadline set forth in the IB’s notice of irregularity, the international application may be abandoned. See TMEP §1903.02 for information about the payment of fees to the IB.

1902.07(c) Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO

1902.07(c)(i) 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 USPTO will neither respond to the notice on behalf of applicant nor advise the applicant as to how to reclassify the goods/services.

The applicant cannot send its response directly to the IB. The applicant must submit the response 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). See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.

An MPU trademark specialist will review the applicant’s response, but only to ensure that the response consists solely of an amendment to classification and that no amendments to the identification of the goods or services have been proposed. So long as the only proposed change is to classification, and such change in classification does not expand the listing of goods/services to exceed the scope of the underlying basic application or registration, the USPTO will forward it to the IB and notify the applicant accordingly. See TMEP §1902.07(c)(ii) regarding proposed amendments to the identification of goods/services.

If additional fees are due as a result of reclassification of goods/services, the applicant must pay the fees directly to the IB in Swiss currency. See TMEP §1903.02 for further information about the payment of fees to the IB.

Under Article 3(2), the IB controls classification and has the final say on classification of goods/services. Therefore, the IB may modify, withdraw or maintain its proposal after reviewing the applicant’s response. Common Reg. 12.

See also TMEP §1401.03(d).

1902.07(c)(ii) Identification of Goods and Services

If the IB determines that the identification of goods/services is too vague or is incomprehensible or 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 USPTO will not respond to the notice on behalf of applicant or advise the applicant as to how to identify the goods/services.

The applicant cannot send a response directly to the IB. Any response regarding the identification of goods/services must be sent 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(a) and 7.14(b); Common Reg. 13(2). See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.

An MPU trademark specialist 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 an amendment to the goods/services in the basic application or registration has been entered into the trademark database since the date the international application was submitted to the USPTO, the goods/services in the response to the IB notice must be within the scope of the amended goods/services. If the goods/services in the response exceed the scope of the goods/services in the basic application or registration as amended, the trademark specialist will notify the applicant that the proposed amendment to the goods/services cannot be certified and that the response will not be forwarded to the IB. If there is time remaining in the IB response period, the applicant may submit a corrected response. If the goods/services in the corrected response 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).

1902.07(d) Other Irregularities that Must Be Remedied By Applicant – Applicant May Respond Directly to the IB or Through the USPTO

Other irregularities to be remedied by applicant include, but are not limited to, insufficient information about the applicant’s representative; missing transliteration; insufficient information about a priority claim; unclear reproduction of the mark; and color claim with no color reproduction. The applicant must remedy the irregularities within three months of the date of the notification. Common Reg. 11(2).

An applicant may file the response to these irregularities either directly with the IB, or through the USPTO either electronically or on paper. 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 the response is filed through the USPTO, the USPTO will not review the response to the irregularity but will forward the response to the IB, and notify the applicant accordingly. See TMEP §1902.07(f) for information about responding to a notice of irregularity through the USPTO.

1902.07(e) Filing Response Directly With the IB

Information about filing responses directly with the IB is available on the WIPO website, currently at http://www.wipo.int/madrid/en/. An applicant may contact the IB by mail to 34 chemin des Colombettes, P.O. Box 18, 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.

1902.07(f) Responding to Notice of Irregularity Through the USPTO

Under Trademark Rule 7.14(e), 37 C.F.R. §7.14(e), an applicant may file a response to an IB notice of irregularity through the USPTO for forwarding to the IB before the IB’s response deadline. The response may be filed electronically or on paper. However, receipt in the USPTO does not fulfill the requirement that the response be received by the IB before the IB response deadline. Therefore, applicants should submit responses to the USPTO as soon as possible, at least one month before the end of the IB response period.

The IB does not have a form for responses to irregularity notices. Applicants are strongly encouraged to use the TEAS form for responses to notices of irregularity. Applicants submitting paper responses to the USPTO for forwarding to the IB should include with the response: (1) the USPTO control number assigned to the international application (U.S. Reference No.); and (2) a copy of the IB’s irregularity notice. The applicant may include a self-addressed, stamped postcard with the response. Upon receipt, the USPTO will place a label indicating the receipt date on the papers and return the postcard to the applicant. However, to be considered timely, the response must be received by the IB before the end of the response period set forth in the IB’s notice, and receipt in the USPTO does not fulfill the IB deadline requirement.

Applicants submitting responses on paper should mail the document to the following address:

Madrid Processing Unit

600 Dulany Street

MDE-7B87

Alexandria, Virginia 22314-5793

37 C.F.R. §§2.190(e) and 7.4(b). The response may be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 8:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c). The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 and Express Mail provisions of 37 C.F.R. §2.198 do not apply to responses to notices of irregularity. 37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2) and 7.4(e).

Please note that fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency, even if the applicant is filing a response to correct irregularities through the USPTO. 37 C.F.R. §7.14(c). See TMEP §1903.02 for further information about the payment of fees to the IB.

Responses to notices of irregularity cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(3).

The USPTO will not process any response filed after the IB response deadline. 37 C.F.R. §7.14(e).

1902.08 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 international registration to additional Contracting Parties, made after the IB registers the mark. The requirements for a subsequent designation are set forth in Article 3^ter(2) and Common Reg. 24. The holder may file the subsequent designation directly with the IB. There is a form for filing a subsequent designation on the IB website at http://www.wipo.int/madrid/en/.

A holder may file a subsequent designation through the USPTO 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. 15 U.S.C. §1141d; 37 C.F.R. §§7.21(a) and (b).

1902.08(a) 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), and are reproduced below:

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 the 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. If a holder’s address is not in the United States, the holder must provide the address of its United States 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 USPTO transmittal fee;
The international fees required by the IB, if the subsequent designation is filed through TEAS; and
An e-mail address for receipt of correspondence from the USPTO, if the subsequent designation is filed through TEAS.

See TMEP §1902.08(b) regarding the form for filing a subsequent designation through the USPTO, and TMEP §1902.08(c) regarding the international fees for a subsequent designation.

The USPTO does not certify subsequent designations. If a subsequent designation meets the requirements set forth in 37 C.F.R. §7.21(b), 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. The USPTO transmittal fee is nonrefundable. 37 C.F.R. §7.21(d).

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). 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).

1902.08(b) Form for Filing Subsequent Designation Through the USPTO

The holder of an international registration submitting a subsequent designation through the USPTO may file either through TEAS or on the official paper form issued by the IB. 37 C.F.R. §7.21(b).

When filing through TEAS, the holder must enter the required information in the data fields of the free-text TEAS form. Holders filing subsequent designations on paper through the USPTO should use the official IB form MM4 posted on the IB website at http://www.wipo.int/madrid/en. The IB will not accept paper applications that are not presented on the official IB form. The form cannot be handwritten. Article 3^ter(2); Common Reg. 24(2)(b); Madrid Admin. Instr. §3(b). The holder should complete the MM4 form online, print the completed form, and submit it to the USPTO via mail, hand delivery or courier service.

The IB’s Guide to International Registration, available on the IB’s website at www.wipo.int/madrid/en, contains instructions for completing the subsequent designation form, at B.II.43.01-44.03.

Once the subsequent designation form is completed, it may be mailed to the USPTO at the following address:

Madrid Processing Unit

600 Dulany Street

MDE-7B87

Alexandria, Virginia 22314-5793

37 C.F.R. §§2.190(e) and 7.4(b). Subsequent designations may also be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 8:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).

If a subsequent designation is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the subsequent designation was submitted on the day it was deposited as Express Mail, provided that the holder complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding the requirements for submission of documents by Express Mail. The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 do not apply to subsequent designations. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).

With a paper-filed subsequent designation, a holder should include a self-addressed, stamped postcard. Upon receipt of the subsequent designation, the USPTO will place a label indicating the receipt date on the papers, and return the postcard to the holder.

Subsequent designations cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(2).

1902.08(c) Fees for Subsequent Designation

USPTO Transmittal Fee. The subsequent designation must include the USPTO transmittal fee, or the USPTO will not forward it to the IB. 37 C.F.R. §7.21(a)(7).

International Fees. If the subsequent designation is filed through TEAS, all international fees for the subsequent designation must be paid at the time of submission. 37 C.F.R. §7.21(a)(8). International fees for subsequent designations filed on paper must be paid directly to the IB in Swiss currency, either before or after submission of the subsequent designation. However, international fees paid after the IB receives the subsequent designation could result in a notice of irregularity issued by the IB. When submitting the subsequent designation on paper to the USPTO, the holder may submit a bank check for international fees in Swiss francs made payable to the IB. The USPTO will forward the check with the subsequent designation to the IB.

See TMEP §1903.02 regarding payment of international fees.

1902.08(d) IB Requirements for Subsequent Designation

The requirements for a subsequent designation are set forth in Article 3^ter and Common Reg. 24. If the subsequent designation meets the minimum requirements for a date of receipt set forth in 37 C.F.R. §7.21(b) (see TMEP §1902.08(a)), the USPTO will forward the subsequent designation to the IB. The USPTO will not examine it to determine whether it is complete. The IB will examine it for completeness.

If the subsequent designation meets the applicable requirements, the IB will record it in the International Register and notify the holder, the Offices of the designated Contracting Parties and the USPTO, if the subsequent designation was submitted through the USPTO. Common Reg. 24(8).

1902.08(e) 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. 37 C.F.R. §7.21(e). The USPTO will make note of receipt of the notice of irregularity in its automated records, but will not take any other action.