Trademark Help – Madrid Protocol – Basics

Trademark Help – Madrid Protocol – Basics

What happens if an applicant fails to include all of the intended designated countries?

What other electronic Madrid Protocol forms are available?

The USPTO offers several stand-alone forms:

1. Application for International Registration
2. Subsequent Designation of an International Registration – to extend protection of goods/services to additional countries or extend protection of additional goods/services to previously designated countries
3. Response to a Notice of Irregularity

TEAS global form options for:

1. Replacement Request – request for the USPTO to note the replacement of a U.S. national registration with a registered extension of protection
2. Transformation Request – to request transformation of a cancelled international registration into a US national application
3. Declaration of Use or Excusable Nonuse under Section 71
4. Combined Declaration of Use & Incontestability under Sections 71 and 15
5. Petition to the Director to Review denial of certification of International Application

 

Can a subsequent designation be submitted through the USPTO for forwarding to the International Bureau?

Yes. If the holder of an international registration is a national of, has a domicile in, or has a real and effective business or commercial establishment in the United States and the international registration is based on a U.S. application or registration, then the subsequent designation may be submitted to the USPTO using the electronic form provided through the Trademark Electronic Application System (TEAS) with a USPTO transmittal fee of $100. The holder also has the option of filing a subsequent designation directly with the International Bureau.

Trademark Help – Madrid Protocol – International Application

How can a U.S. trademark owner file an international application with the USPTO?

Generally, an international application must be filed electronically using the Trademark Electronic Application System for International Applications (TEASi).

 

What happens after the International Bureau registers the mark in the international application?

Once the International Bureau registers the mark, the International Bureau will notify each Contracting Party designated in the international registration of the request for an extension of protection to that country. Each designated Contracting Party will then examine the request for an extension of protection the same as it would a national application under its laws. If the application meets the requirements for registration of that country, then the Contracting Party will grant protection of the mark in its country.

There are strict time limits for refusing to grant an extension of protection (a maximum of 18 months). If a Contracting Party does not notify the International Bureau of any refusal of an extension of protection within the time limits set forth in Article 5(2) of the Madrid Protocol, the holder of the international registration is automatically granted protection of its mark in that country.

May an applicant limit the goods and/or services in an international registration?

Yes. An applicant may either limit the goods and/or services at the time of filing the international application in the appropriate section of the form or limit them later with the International Bureau (IB) by submitting the required Form MM6 available at www.wipo.int/madrid/en/forms(link is external).

May an applicant file an appointment of representative for their international application through the USPTO?

No. An applicant must file the appointment directly with the IB on Form MM12.

If an international application is denied certification by the USPTO, may an applicant resubmit or reuse the USPTO Reference Number assigned to the denied international application when a new international application is filed?

No. Applicant may not resubmit an international application using the same USPTO Reference Number. A new international application will receive a new USPTO Reference Number.

What happens after the international application has been submitted to the USPTO?

If the international application meets the requirements of 37 C.F.R. §7.11(a), then the USPTO will certify that certain information in the international application is the same as the information in the U.S. basic application or registration and forward the international application to the International Bureau.

If the international application does not meet the requirements of 37 C.F.R. §7.11(a), then the USPTO will not certify the international application. The USPTO will notify the international applicant of the reasons why the international application cannot be certified. The certification fee is not refundable. The international applicant may promptly resubmit a corrected international application based on the same U.S. application or registration. The certification fees must be included with the new submission.  Alternatively, the international applicant can file a petition to the Director to review the denial of certification.  Timeliness of petitions is paramount as the international registration date may be affected if the petition is filed too late after issuance of the denial of certification.

How does one know if a petition to the Director to review the denial of certification of an international application has been filed by an applicant and processed by the USPTO?

By using the USPTO Reference Number assigned to an international application, information concerning an international application may be obtained in Trademark Status and Document Retrieval (TSDR) under the section titled “Madrid History” on the “Status” tab. Use the “Documents” tab of TSDR to view the actual petition that was filed and the processing documentation issued by the USPTO in granting or denying the petition.