SUBPART A    GENERAL INFORMATION

§7.1    Definitions of terms as used in this part.

  • (a) The Act means the Trademark Act of 1946, 60 Stat. 427, as amended, codified in 15 U.S.C. 1051 et seq.
  • (b) Subsequent designation means a request for extension of protection of an international registration to a Contracting Party made after the International Bureau registers the mark.
  • (c) The acronym TEAS means the Trademark Electronic Application System, available at http://www.uspto.gov.
  • (d) The term Office means the United States Patent and Trademark Office.
  • (e) All references to sections in this part refer to 37 Code of Federal Regulations, except as otherwise stated.
  • (f) The definitions specified in § 2.2 of this chapter apply to this part.

[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 80 FR 33170, June 11, 2015, effective July 11, 2015; 84 FR 31498, July 2, 2019, effective August 3, 2019]

§7.2    [Reserved]

§7.3    Correspondence must be in English.

International applications and registrations, requests for extension of protection and all other related correspondence with the Office must be in English. The Office will not process correspondence that is in a language other than English.

[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003]

§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 § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacement under § 7.28, requests for transformation under § 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: Madrid Processing Unit, 600 Dulany Street, MDE-7B87, Alexandria, VA 22314-5793.
    • (1) International applications under § 7.11, subsequent designations under § 7.21, requests to record changes in the International Register under § 7.23 and § 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 Priority Mail Express® pursuant to § 2.198, in which case they will be accorded the date of deposit with the United States Postal Service.
    • (2) Responses to notices of irregularity under § 7.14, requests to note replacement under § 7.28, and requests for transformation under § 7.31, when filed by mail, will be accorded the date of receipt in the Office.
  • (c) Hand-Delivered Correspondence. International applications under § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacement under § 7.28, requests for transformation under § 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, James Madison Building--East Wing, Concourse Level, 600 Dulany Street, Alexandria, VA 22314, Attention: MPU.
  • (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 § 7.11;
    • (2) Subsequent designations under § 7.21;
    • (3) Responses to notices of irregularity under § 7.14;
    • (4) Requests to record changes of ownership under § 7.23;
    • (5) Requests to record restrictions of the holder’s right of disposal, or the release of such restrictions, under § 7.24; and
    • (6) Requests for transformation under § 7.31.
  • (e) Certificate of Mailing or Transmission Procedure Does Not Apply. The certificate of mailing or transmission procedure provided in § 2.197 does not apply to the documents specified in paragraph (d) of this section.

[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, effective Oct. 4, 2004; 69 FR 63320, Nov. 1, 2004; 72 FR 18907, April 16, 2007; 79 FR 63036, Oct. 22, 2014]

§7.5    [Reserved]

§7.6    Schedule of U.S. process fees.

  • (a) The Office requires the following process fees:
    • (1) Certification of international application based on single application or registration.
      • (i) For certifying an international application based on a single basic application or registration, filed on paper, per class—$200.00
      • (ii) For certifying an international application based on a single basic application or registration filed through TEAS, per class—$100.00
    • (2) Certification of international application based on more than one application or registration.
      • (i) For certifying an international application based on more than one basic application or registration filed on paper, per class—$250.00
      • (ii) For certifying an international application based on more than one basic application or registration filed through TEAS, per class—$150.00
    • (3) Transmission of subsequent designation.
      • (i) For transmitting a subsequent designation under § 7.21, filed on paper—$200.00
      • (ii) For transmitting a subsequent designation under § 7.21, filed through TEAS—$100.00
    • (4) Transmission of request to record an assignment or restriction.
      • (i) For transmitting a request to record an assignment or restriction, or release of a restriction, under § 7.23 or § 7.24 filed on paper—$200.00
      • (ii) For transmitting a request to record an assignment or restriction, or release of a restriction, under § 7.23 or § 7.24 filed through TEAS—$100.00
    • (5) Notice of replacement.
      • (i) For filing a notice of replacement under § 7.28 on paper, per class—$200.00
      • (ii) For filing a notice of replacement under § 7.28 through TEAS, per class—$100.00
    • (6) Affidavit under section 71.
      • (i) For filing an affidavit under section 71 of the Act on paper, per class—$225.00
      • (ii) For filing an affidavit under section 71 of the Act through TEAS, per class—$125.00
    • (7) Filing affidavit under section 71 during grace period.
      • (i) Surcharge for filing an affidavit under section 71 of the Act during the grace period on paper, per class—$200.00
      • (ii) Surcharge for filing an affidavit under section 71 of the Act during the grace period through TEAS, per class—$100.00
    • (8) Correcting deficiency in section 71 affidavit.
      • (i) For correcting a deficiency in a section 71 affidavit filed on paper—$200.00
      • (ii) For correcting a deficiency in a section 71 affidavit filed through TEAS—$100.00
  • (b) The fees required in paragraph (a) of this section must be paid in U.S. dollars at the time of submission of the requested action. See § 2.207 of this chapter for acceptable forms of payment and § 2.208 of this chapter for payments using a deposit account established in the Office.

[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 75 FR 35973, June 24, 2010, effective June 24, 2010; 81 FR 72694, Oct. 21, 2016, effective Jan. 14, 2017]

§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:
    • (1) International application fees;
    • (2) Subsequent designation fees; and
    • (3) Recording fee for an assignment of an international registration under § 7.23.
  • (b) The fees in paragraph (a) of this section may be paid as follows:
    • (1)
      • (i) Directly to the International Bureau by debit to a current account with the International Bureau. In this case, an applicant or holder’s submission to the Office must include the International Bureau account number; or
      • (ii) Directly to the International Bureau using any other acceptable method of payment. In this case, an applicant or holder’s submission to the Office must include the International Bureau receipt number for payment of the fees; or
    • (2) Through the Office. Fees paid through the Office must be paid in U.S. dollars at the time of submission. See § 2.207 of this chapter for acceptable forms of payment and § 2.208 of this chapter for payments using a deposit account established in 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/.

[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, effective Oct. 4, 2004]