1904.09    Transformation to Application Under §1 or §44

An international registration is dependent on the basic application and/or basic registration for five years after the date of the international registration.  Article 6(3).  If the basic application or registration is restricted, abandoned, cancelled, or expired with respect to some or all of the goods or services listed in the international registration, the Office of Origin will notify the IB, and the IB will cancel, to the extent applicable, the international registration and notify the USPTO of the cancellation.  Article 6(4).  See TMEP §1902.09.  Thus, an Article 6(4) cancellation is a cancellation, in whole or in part, of the international registration by the IB at the request of an Office of Origin. Thereafter, the USPTO will cancel in whole, or restrict in part, the corresponding §66(a) registered extension of protection, or abandon, in whole or in part, the corresponding §66(a) application.

In this situation, the holder of the international registration may "transform" the goods and/or services to which the cancellation applies in the corresponding pending or registered §66(a) extension of protection to the United States into an application under §1 or §44 of the Trademark Act for registration of the same mark for any or all of the cancelled, restricted, or abandoned goods/services that were covered by the extension of protection.  The effective filing date of the new §1 or §44 application is the international registration date, the date of recordal of the extension of protection if based on subsequent designation, or the date of priority of the request for extension of protection with the IB, whichever is applicable. 15 U.S.C. §1141j(c); Article 9quinquies.

A request for transformation must be filed within three months after the date on which the Article 6(4) cancellation was processed by the IB. 15 U.S.C. §1141j(c); Article 9quinquies(i). The deadline for filing a request for transformation is a statutory requirement. The Director cannot extend, suspend, or waive this statutory requirement for any reason, even for an extraordinary situation. See In re Mother Tucker's Food Experience (Can.) Inc., 925 F.2d 1402, 1405, 17 USPQ2d 1795, 1797-98 (Fed. Cir. 1991); In re Media Cent. IP Corp., 65 USPQ2d 1637, 1639 (Dir USPTO 2002); TMEP §§ 1604.04, 1708.

An extension of protection can be transformed only in the event of an Article 6(4) cancellation of the international registration, that is, at the request of the Office of Origin due to the cancellation of the basic application and/or registration.  It is not available if the international registration expires for failure to renew, is cancelled, in whole or in part, at the request of the holder, or is cancelled, in whole or in part, for any other reason.   15 U.S.C. §1141j(c); 37 C.F.R. §7.31; Article 9quinquies.  See TMEP §1904.09(a) for the requirements for transformation.

1904.09(a)    Requirements for Transformation

A request for transformation must be filed within three months after the date on which the international registration was cancelled, in whole or in part.  Article 9quinquies(i); 15 U.S.C. §1141j(c).  The request must include:

  • (1)   The serial number or registration number of the extension of protection to the United States (i.e., the §66(a) application or registered extension of protection);
  • (2)   The name and address of the holder of the international registration;
  • (3) The goods and/or services to be transformed, if other than all the goods and/or services that have been cancelled;
  • (4)   The domestic application filing fee required by 37 C.F.R. §2.6(a)(1) for at least one class of goods or services; and
  • (5)   An e-mail address for receipt of correspondence from the USPTO.

37 C.F.R. §7.31(a).

The holder must file the request for transformation directly with the USPTO, and the transformed application will be examined as a domestic application.

Under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and Article 9quinquies, transformation may take place only if the international registration is cancelled or restricted at the request of the Office of Origin under Article 6(4), due to the cancellation of the basic application and/or registration.  It is not available if the international registration expires for failure to renew, is cancelled or restricted at the request of the holder, or is cancelled or restricted for any other reason.

The request for transformation should be mailed using the First Class Service of the USPS to the following address:

Madrid Processing Unit

600 Dulany Street

Alexandria

Virginia

22314-5793

37 C.F.R. §§2.190(e) and 7.4(b).  Alternatively, the request 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 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).  The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 and Priority Mail Express® provisions of 37 C.F.R. §2.198 do not apply to requests for transformation.  37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2), and 7.4(e).

Requests for transformation cannot be filed by fax.  37 C.F.R. §§2.195(d)(5) and 7.4(d)(6).

1904.09(b)    Examination of Transformed Application

A "transformed" application under §1 or §44 of the Trademark Act resulting from the transformation of a cancelled extension of protection must comply with all the requirements of the Trademark Act and Trademark Rules of Practice.  37 C.F.R. §7.31(c).  The USPTO will assign a new serial number, and will link the prosecution history of the cancelled extension of protection to the new "transformed" application.  A notation of the serial number to which the cancelled extension of protection is transformed appears in the electronic record of the cancelled extension of protection, under "Other Information" in the Trademark database (in the "Transformed To" field).  Similarly, a notation of the serial number of the cancelled request for extension of protection appears in the Trademark database for the new transformed application (in the "Transformed From" field).

The "transformed" application will have the same filing date as the cancelled extension of protection, that is:  (1) the international registration date, if the request for extension of protection to the United States was made in the international application; or (2) the date of recordal of the subsequent designation with the IB, if the request for extension of protection to the United States was made in a subsequent designation.  If the extension of protection was entitled to priority under §67 of the Trademark Act, 15 U.S.C. §1141g, the new application is entitled to the same priority.

If an examining attorney has already searched USPTO records for conflicting marks, the examining attorney assigned to the transformed application does not have to conduct a new search, since the effective filing date will not change.  The examining attorney must either ensure that a copy of the search statement is placed in the electronic record of the transformed application, or enter a Note to the File in the record, indicating the date on which the search was conducted and the serial number of the §66(a) application in which the search statement is of record.

The examining attorney must require the applicant to submit a verified statement in support of the application that relates back to the filing date of the transformed application.  See TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark under §1 or §44, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.

If it is unclear from the transformation request, the examining attorney must require the holder to clarify the goods/services to be transformed, if other than all the goods/services that were covered by the cancelled extension of protection. 37 C.F.R. §7.31(a)(3).

Even if the mark in the extension of protection was already published or registered, republication will be required, due to the substitution of a new basis for registration.  37 C.F.R. §2.35(b)(2).

Generally, in examining a "transformed" application where the extension of protection was published or registered, the USPTO will only issue requirements or refusals related to the new §1 or §44 basis.  However, in some cases, where a significant length of time has elapsed since the initial examination of the request for extension of protection, refusal of registration may be appropriate due to changed circumstances.  For example, the mark may have become descriptive or generic as applied to the goods/services.