1902.03    Certification of International Application by 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 to determine whether such data corresponds to the basic application or basic registration.

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 (Common Reg. 9(5)(d)(i));
  • That the mark in the international application is the same as the mark in the basic application or registration (Common Reg. 9(5)(d)(iv));
  • That the applicant is the same person or entity listed as the owner of the basic application or registration (Common Reg. 9(5)(d)(ii));
  • That the goods/services identified in the international application are covered by the basic application or registration (Common Reg. 9(5)(d)(vi));
  • That the applicant is qualified to file an international application under §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 consists of a color or combination of colors, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viibis) 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 TSDR.  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 TSDR 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 using the First Class Service of the USPS to:

Madrid Processing Unit

600 Dulany Street

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.

Alternatively, the applicant may use a courier service or 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 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.  37 C.F.R. §7.4(c).