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1904.02 Examination of Request for Extension of Protection to the United States

1904.02(a) Examined as Regular Application

Under §68(a) of the Trademark Act, a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register. 15 U.S.C. §1141h. It is unnecessary for the examining attorney to review the international registration on file at the IB, since the IB will forward all the necessary information with the request for extension of protection or in subsequent notifications, such as notices of correction, limitation, or change to the name or address of the holder or holder’s representative.

Except for 37 C.F.R. §§2.22-2.23, 2.130-2.131, 2.160-2.166, 2.173, and 2.181-2.186, all rules in 37 C.F.R. Part 2 apply to a request for extension of protection of an international registration to the United States, including sections related to proceedings before the Trademark Trial and Appeal Board, unless stated otherwise. All rules in 37 C.F.R. Parts 10 and 11 relating to representation of others before the USPTO also apply to requests for extension of protection. 37 C.F.R. §7.25(a).

1904.02(b) Examination of Classification of Goods/Services in §66(a) Applications

In a §66(a) application, the IB controls the classification. Article 3(2). The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration. Any classification change made during examination would ultimately be refused by the IB upon notification of the final grant of protection.

Therefore, in a §66(a) application, the following types of amendments are prohibited:

Changing the classification of goods/services from the classification assigned by the IB;
Adding a class to the application that is not the subject of the request for extension of protection to the United States; or
Transferring goods/services between classes in a multiple-class application.

37 C.F.R. §2.85(d). See TMEP §1401.03(d).

The only instance in which classification in a §66(a) application can be altered is upon the receipt of a correction from the IB. See TMEP §1904.02(e)(i) regarding IB corrections.

If the classification of a §66(a) application is inadvertently changed during examination, the USPTO will issue corrections to the holder and to the IB.

1904.02(c) Examination of Identification of Goods/Services in §66(a) Applications

Although the IB determines classification of the goods/services, for purposes of identification, the examining attorney will examine the identification of goods/services in a §66(a) application according to the same standards of specificity used in examining applications under §§1 and 44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. Specifically, the examining attorney must follow the procedures set forth in the TMEP and identify the goods/services in accordance with the USPTO’s Acceptable Identification of Goods and Services Manual ("USPTO ID Manual") whenever possible. However, with respect to requests for extension of protection to the U.S., the assigned classes define the scope of the goods/services for the purpose of determining the extent to which the identification may be amended in accordance with 37 C.F.R. §2.71.

When the IB is unable to determine if the classification assigned to particular goods/services by an applicant’s Office of origin is correct, the IB will request clarification. If no clarification is provided, the IB will include the unclear wording from the international application in the international registration and will indicate, in parentheses, that the wording is "considered too vague for classification," "incomprehensible," or "linguistically incorrect." Although included in the listing of goods/services of the request for extension of protection, the parenthetical language is not part of the scope of the identification and must not be part of any application that is eventually approved for publication.

If the initial identification of goods/services in the §66(a) application is definite, but misclassified under United States standards, the examining attorney must accept the identification, and cannot change the classification. If the initial identification of goods/services is not definite, the classification cannot be changed and the scope of the identification for purposes of permissible amendment is limited by the IB-assigned classification. See TMEP §§1401.03(d), 1402.01(c), and 1402.07(a). Because the international registration is limited to those classes assigned by the IB, the identification includes only those products or services falling within the identified classes. To propose an amendment outside of the scope of the classes would result in the lack of a basis for registration of such goods/services under U.S. law.

If a §66(a) applicant wants to seek registration for goods, services, or class(es) which are included in the international registration but were not originally included in the request for extension of protection to the United States, the §66(a) applicant must file a subsequent designation with the IB. Article 3ter(2); Guide to International Registration, B.II.32.03. To seek registration for good/services not within the scope of the international registration, the applicant may file a separate application for the same mark under §1 and/or §44.

The identification of goods/services must be specific, definite, clear, accurate, and concise. See TMEP §1402.01 and cases cited therein. The USPTO has discretion to require the degree of particularity deemed necessary to clearly identify the goods or services covered by the mark. In re Omega SA, 494 F.3d 1363, 83 USPQ2d 1541 (Fed. Cir. 2007) (noting that the USPTO has discretion to require greater particularity than an entry in WIPO’s Alphabetical List of Goods and Services). Even if the IB characterizes terms as "too vague," "incomprehensible," or "linguistically incorrect," the USPTO has discretion to consider them de novo based on established policies regarding specificity within the context of the class assigned.

Generally, there are three types of identifications: (1) acceptable identifications of goods/services; (2) indefinite identifications of goods/services with acceptable options within the scope of the class; and (3) indefinite identifications of goods/services that do not include any goods/services in the designated class.

1904.02(c)(i) Acceptable Identifications of Goods/Services

When the identification of goods/services is definite in accordance with USPTO policies, the identification is acceptable, regardless of the class assigned. If the goods/services are classified in accordance with the current edition of the Nice Agreement, no further requirements are necessary.

An international registration may encompass goods/services that were classified under an earlier version of the Nice Agreement. If the IB’s classification of goods/services in the §66(a) application is different from the classification currently set forth in the USPTO ID Manual, the examining attorney will not require amendment of the classification. However, the examining attorney should notify the Administrator for Trademark Classification Policy and Practice ("Administrator") of the serial number, using the internal TM Madrid ID/Class mailbox. The goods/services cannot be moved to another class identified in the application. 37 C.F.R. §2.85(d).

With respect to acceptable goods/services that appear to be misclassified, if the examining attorney determines that the class would be proper were the goods/services amended with further clarifying language, the examining attorney may require an amendment for further specificity to limit the identification to goods/services that are in the class indicated in the international registration.

Examples:

The goods are identified as "footwear" in Class 25. The wording is definite and the IB has assigned the correct class. No action necessary.
The services are identified as "legal services," but the IB has assigned Class 42. The wording is definite, but the class is not consistent with the current edition of the Nice Agreement. No action is necessary. The examining attorney should notify the Administrator of the serial number.
The goods are identified as "tobacco," but the IB has assigned Class 35. The Alphabetical List of the Nice Agreement classifies such goods in Class 34. The examining attorney will accept the goods in the assigned class. The examining attorney should notify the Administrator of the serial number.
The goods are identified as "pasta," but the IB has assigned Class 3. The Alphabetical List of the Nice Agreement classifies such goods in Class 30. The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.
The goods are identified as "nutritional supplements as included in this class," but the IB has assigned Class 29. Even with the wording added to "nutritional supplements," the identification of goods remains definite, but the class is not consistent with the USPTO Identification and Classification of Goods and Services Manual. The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.

1904.02(c)(ii) Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class

When the identification of goods/services is unacceptable as indefinite, and more specific language that identifies goods/services in the class can be suggested, the examining attorney must require amendment of the wording and advise the applicant that any proposed amendment must be within the scope of the class of the international registration. The examining attorney should suggest acceptable identification(s) within the class. Any proposed amendment must also be within the scope of the wording of the identification as originally indicated (37 C.F.R. §2.71(a)).

Examples:

The goods are identified as "headgear" in Class 25. A requirement for greater specificity is issued, offering suggestions for more narrowly identified goods in Class 25, such as "headgear, namely hats, beanies, bathing caps." The examining attorney should not suggest items within the scope of "headgear" that are not in Class 25, such as "helmets" in Class 9 or "headgear for orthodontic appliances" in Class 10. The Office action must include an advisory that only goods within the scope of the IB-assigned class will be accepted.
The services are identified as "consultation services" in Class 36. A requirement for more specificity is issued, offering suggestions for more narrowly recited services in Class 36, such as "banking consultation," "credit consultation," or "financial consultation." The Office action must include an advisory that only services within the scope of the IB-assigned class will be accepted.
The goods are identified as "video games" in Class 28. The examining attorney may suggest that the applicant adopt "hand held unit for playing video games," "stand alone video game machines," or "video game machines for use with televisions" in Class 28. A proposed amendment including goods in the nature of "video game software," or "video game cartridges" (both of which are Class 9 items under the current edition of the Nice Agreement) would be outside of the scope of the goods covered by the international registration, and such an amendment must be refused. The Office action must include an advisory that amendments may only include goods within the scope of the class assigned by the IB.

1904.02(c)(iii) Indefinite Identification of Goods/Services that Does Not Include Any Goods/Services Within the Class

In the rare situation where the identification is indefinite, and there appear to be no goods/services that are within the scope of the identification as presently worded that are properly classified in the indicated class, the examining attorney must nevertheless require the applicant to submit an acceptably definite identification. To be acceptable, any submitted amendment must be within the scope of the wording of the original goods/services.

The examining attorney should explain that he/she is unable to suggest substitute wording. The examining attorney may offer the applicant the option of deleting the unacceptable language from the application, but must not issue a requirement for the applicant to do so.

Examples:

The services are identified as "food services" in Class 36. The identification is too broad to be acceptable, yet does not encompass any services that currently would be properly classified in Class 36, as restaurant services and other similar food and beverage services are in Class 43. The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the recitation within the scope of services properly classified in Class 36 in accordance with the current edition of the Nice Agreement, and notify the Administrator of the serial number.
The goods are identified as "engine pumps" in Class 12. The identification is too broad to be acceptable, yet does not encompass any goods that currently would be properly classified in Class 12, as water and oil pumps for land vehicle engines are in Class 7. The examining attorney need not make any suggestions as to acceptable wording, but must require the applicant to amend the identification within the scope of goods properly classified in Class 12 in accordance with the current edition of the Nice Agreement, and notify the Administrator of the serial number.

1904.02(c)(iv) Examination of Proposed Amendments and Issuance of Final Requirements for an Acceptable Identification

If, in response to the Office action, an applicant proposes an amendment that: (1) remains unacceptably indefinite; (2) is beyond the scope of the original wording; or (3) is beyond the scope of the class, the examining attorney must refuse to accept the amendment. If the proposed amendment raises no new issues and the application is otherwise in condition for a final action, the examining attorney must issue a final requirement for an acceptable identification.

The basis for refusing an unacceptably indefinite identification is the requirement for a list of "particular goods and services" in a complete application. 37 C.F.R. §2.32(a)(6). Trademark Rule 2.71(a) provides the basis for refusal of a proposed amendment that exceeds the scope of the originally identified goods/services, including wording beyond the scope of the class of the international registration. The applicant is not bound by the scope of the language in the unacceptable amendment but, rather, by the language of the identification before the proposed amendment. See TMEP §1402.07(d). The examining attorney should also advise the applicant that the previous items listed in the existing identification (not the unacceptable substitute) remain operative for purposes of future amendment. Once an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that amended language. See TMEP §1402.07(e).

The examining attorney may suggest – but must not require – that the applicant delete an unacceptable term or phrase or proposed goods/services entry that fall outside the scope of the class. If the application contains acceptable goods/services that can be approved for publication, and would otherwise be in condition for a partial abandonment advisory, the examining attorney should indicate that if an acceptable response is not received, the unacceptable goods/services will be abandoned and the application will proceed with the acceptable items only. See TMEP §718.02(a) regarding partial abandonment.

If deletion or abandonment of an unacceptable term or phrase would result in deletion of all goods/services from the §66(a) application, the examining attorney must not suggest that the applicant delete the unacceptable wording. Instead, the examining attorney must continue to require an acceptable amendment, making the requirement final if appropriate.

If it appears that there is an error in classification, the examining attorney may suggest the applicant contact the IB to request correction of or a limitation to the international registration. The USPTO will not suspend prosecution of the application unless the applicant requests suspension in a timely response to an Office action and supports the request with a copy of the request for correction filed with the IB. See TMEP §716.02(g). The applicant may also appeal the final identification requirement to the Trademark Trial and Appeal Board, or petition to the Director under 37 C.F.R. §2.146 to review the requirement, if permitted by 37 C.F.R. §2.63. See TMEP §1501.01 regarding appealable matter and TMEP §1704 regarding petitionable subject matter.

1904.02(c)(v) Effect of Indicated Classes – No Precedential Value on Later-Filed Applications

Article 3 of the Madrid Protocol requires the goods and services of the international application to be classified according to the Nice Agreement. The IB uses the edition of the Nice Agreement in effect at the time international registration is sought to classify the goods and services. The opinion of the IB with respect to classification prevails over that of the applicant and the Office of origin in the event of disagreement. Article 3(2).

Because the IB, rather than the USPTO, determines classification assigned to goods and services encompassed by the international registration, and because registered extensions of protection may be based upon international registrations issued under previous editions of the Nice Agreement, the assigned classes in registered extensions of protection will not be considered as controlling in any later-filed U.S. applications to the extent such classification is contrary to USPTO policy. The classification of goods/services in registered extensions of protection and published applications under §66(a) is only relevant to the particular goods and services identified therein, and should not be relied upon in other applications to support classification or identification of goods or services that are otherwise unacceptable under current USPTO practice. See TMEP §1402.14.

1904.02(d) Certification and Collective Marks

Classes A, B, and 200 are classes from the prior 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 classification system under the Nice Agreement.

However, a §66(a) application may indicate that the mark is a "Collective, Certificate or Guarantee Mark." In such a case, the examining attorney will require the applicant to clarify for the record the type of mark for which it seeks protection. The examining attorney must also require the applicant to comply with the requirements for the particular type of mark, i.e., collective trademark, collective service mark, collective membership mark, or certification mark. See TMEP §§1303 et seq. regarding collective trademarks and collective service marks, TMEP §§1304 et seq. regarding collective membership marks, and TMEP §§1306 et seq. regarding certification marks.

If a §66(a) applicant indicates that the mark is a certification mark or collective membership mark, the USPTO will not reclassify it into United States Class A, B, or 200. However, the examining attorney must ensure that the applicant complies with all other United States requirements for certification or collective membership marks. See TMEP §§1304 et seq. and §§1306 et seq.

1904.02(e) Corrections and Limitations to the International Registration

1904.02(e)(i) Corrections

When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio. Requests for correction may be submitted to the IB by the holder (i.e., a §66(a) applicant seeking protection in U.S.), the Office of Origin of the international application, or in some cases by the USPTO Administrator for Trademark Classification Policy and Practice.

Corrections that merely reclassify the originally identified goods/services may be accepted; however, any indefinite wording of the identification of such goods/services that was acceptably amended during the course of USPTO examination will remain as amended, that is, the amended wording is not affected or changed by the correction issued by the IB. When an applicant amends the identification of goods/services in a manner that is acceptable to the examining attorney, including voluntary deletion of goods/services, the amendment replaces all previous identifications, and thus restricts the scope of goods/services to that amended language. See TMEP §1402.07(e).

1904.02(e)(ii) Limitations

The holder of an international registration may record a limitation of the good/services, which may affect some or all of the designated Contracting Parties. Article 9bis(iii). Upon recordation, the IB will notify the USPTO if the U.S. is affected by the limitation. The recording of a limitation does not remove the goods/services concerned from the international registration, but simply narrows the goods/services for which the holder seeks protection in the particular countries affected.

A limitation may set forth particular goods/services narrower in scope than the goods/services as identified in the international registration. For example, if the international registration covers "clothing," the holder may limit the goods to "sweaters and pants" with respect to the U.S. Upon notification by the IB, if the examining attorney considers that the change requested is not in fact a limitation but an expansion of the list of goods/services, or is otherwise unacceptable, then the USPTO may declare that the limitation has no effect in the United States. Common Regs. 27(5)(a)-(c). For example, if the goods are identified as "clothing" in the international registration, and the limitation specifies "sweaters and hair bows," the examining attorney must refuse to apply the "hair bows" portion of the limitation to the request for extension of protection to the United States because it expands, rather than limits, the scope of the goods of the international registration.

See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB; TMEP §1904.03(g) regarding limitations in pending §66(a) applications; and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States.

1904.02(e)(iii) Limitations vs. Amendments

To the extent that an amendment of the identification in a §66(a) application narrows or restricts the goods/services, an amendment is comparable to a limitation affecting only the United States. A limitation filed at the IB by the applicant clarifying the nature of the goods/services may render the identification of goods/services in the §66(a) application sufficiently definite. Nevertheless, if the examining attorney has issued an Office action requiring amendment of the identification of goods/services, a proper response to the Office action must be received in the allowed time period. Simply recording a limitation with the IB is not a response to an Office action. The applicant must file a response with the USPTO within six months of the date on which the USPTO issued the Office action, stating that the applicant has recorded a limitation that will resolve the outstanding issue(s).

1904.02(f) Mark Must Be Registrable on Principal Register

There is no provision in the Trademark Act for registration of a mark in a request for an extension of protection on the Supplemental Register. If the proposed mark is not registrable on the Principal Register, the extension of protection must be refused. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).

1904.02(g) Refusal Must Be Made Within 18 Months

Under §68(c) of the Trademark Act and Article 5 of the Protocol, the USPTO must notify the IB of any refusal entered in a §66(a) application within 18 months of the date the IB transmits the request for extension of protection to the USPTO. See TMEP §1904.03(a).

The Trademark database tracks the period of time within which the USPTO must notify the IB of a refusal of protection. This information appears in the §66(a) International Registration data field "Auto Protection Date." If a refusal is not received by the IB as of this date, the mark receives automatic protection under Article 5(5) of the Protocol.

1904.02(h) Office Actions and Responses

The USPTO will send the first Office action in a §66(a) application to the IB. The first Office action is known as a provisional refusal and must be reviewed by the IB. If the provisional refusal meets the applicable requirements (see TMEP §§1904.03 et seq.), the IB will process the refusal and send it to the holder (i.e., the §66(a) applicant). The IB notifies the USPTO of the date on which it processed the refusal, and the USPTO updates the Trademark database with this information. A response to the Office action must be sent to the USPTO, not the IB, and is due in the USPTO within six months of the date on which the USPTO sent the action to the IB, not the date on which the refusal was processed by the IB. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP § 1904.03(c). Failure to respond to the Office action within the time provided will result in abandonment of the application. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). See TMEP § 711 regarding the deadline for response to an Office action and TMEP §§ 718.02 and 718.03-718.03(a) regarding abandonment for failure to respond or incomplete response to an Office action.

A priority action may be issued as a first Office action in a §66(a) application. However, an examiner’s amendment or a combined examiner’s amendment/priority action (see TMEP §§707 et seq. and 708.05) may not be issued as a first Office action because the IB will not accept such amendments. Examiner’s amendments and combined examiner’s amendments/priority actions may be issued as second and subsequent actions if authorized by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner"). See TMEP §§602 et seq. regarding persons who are authorized to represent applicants, registrants, and parties to proceedings before the USPTO.

The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO. See TMEP §§609.01(a) and 1904.02(i) regarding correspondence in §66(a) applications.

1904.02(i) Correspondence Address

The address of the international registration holder’s designated representative is treated as the correspondence address, unless a change of correspondence address is filed in the USPTO.

The USPTO will send second and subsequent Office actions, and other notices, directly to the §66(a) applicant’s correspondence address of record.

In a §66(a) application or a registered extension of protection, the USPTO will accept a notice of change of the correspondence address, signed by the applicant or registrant, someone with legal authority to bind the applicant/registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner, and will send correspondence to the new address. See 37 C.F.R. §§2.18(b)(2) and 2.193(e)(9) and TMEP §§609 et seq. regarding the procedures for establishing and changing the correspondence address in the USPTO.

A change of the correspondence address in the USPTO records will not affect the address of the holder’s representative designated in the international registration, to which the IB sends correspondence. A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. See TMEP §1906.01(d). There are forms for changing the name or address of the representative on the IB website at http://www.wipo.int/madrid/en/. See also Common Reg. 36(i).

See TMEP §§602.03 et seq. regarding foreign attorneys and agents, TMEP §609.01(a) regarding correspondence in §66(a) applications, and TMEP §609.04 regarding correspondence with parties not domiciled in the United States.

1904.02(j) Mark Cannot Be Amended

The Madrid Protocol and the Common Regulations do not permit amendment of a mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The IB’s Guide to International Registration, Para. B.II.72.02, provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time. If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application. This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be....

Accordingly, because an application under §66(a) is a request to extend protection of the mark in an international registration to the United States, the Trademark Rules of Practice make no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit such amendments. See 37 C.F.R. §2.72; TMEP §807.13(b). However, the applicant still must comply with the United States requirements regarding drawings and descriptions of the mark. See TMEP §1904.02(k).

In limited circumstances, an applicant may seek to amend a §66(a) application to add a standard character claim. See TMEP §807.03(g).

1904.02(k) Drawings and Descriptions of the Mark

Though the mark in a §66(a) application cannot be amended, the applicant must comply with the United States requirements regarding drawings of the mark. 15 U.S.C. §1141h(a); 37 C.F.R. §§2.52 and 7.25(a).

If the drawing does not meet United States requirements (e.g., due to the improper inclusion of the federal registration symbol ® or the unacceptable reproductive quality of the image), the examining attorney will require a substitute drawing. Furthermore, if the reproduction of the mark in the international registration consists of multiple renditions of a three-dimensional mark, the applicant will be required to either: (1) comply with the United States requirement to depict the mark in a single rendition, 37 C.F.R. §2.52(b)(2); or (2) petition the Director to waive this requirement. See TMEP Chapter 1700 regarding petitions, and TMEP §807.10 regarding drawings of three-dimensional marks.

If the international registration contains no color claim, but there is a color drawing in the international registration, the applicant must either: (1) submit a claim of the color(s) featured in the mark and describe their location; or (2) state for the record that no claim of color is made with respect to the international registration, and submit a black-and-white reproduction of the same mark depicted in the international registration. See TMEP §807.07(b).

A §66(a) applicant must also comply with United States requirements regarding descriptions of the mark. 37 C.F.R. §§2.37, 2.52(b)(5), and 7.25(a).

With respect to sound marks and other non-visual marks, if the international registration contains a visual depiction of some kind, such as a musical staff corresponding to the notes of a sound mark, the applicant will be required to comply with the United States requirements for a detailed description of the mark. See TMEP §807.09.

1904.02(l) Jurisdiction

The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act. 37 C.F.R. §2.84. However, when deciding whether to grant a request to restore jurisdiction in a §66(a) application, the Director must also consider the time limits for notifying the IB of a refusal, set forth in Article 5(2) of the Protocol and §68(c) of the Trademark Act, 15 U.S.C. §1141h(c).