1906.01(b) Restriction of Holder’s Rights of Disposal
Under Regulations Rule 20(1)(a), a holder of an international registration or a Contracting Party of the holder (i.e., a Contracting Party in which the holder is a national, is domiciled, or has a real and effective business or commercial establishment) may inform the IB that the holder’s right to dispose of the international registration has been restricted in whole or in part. Also, under Regulations Rule 20(1)(b), the office of any designated Contracting Party may inform the IB that the holder’s right of disposal has been restricted in the territory of that Contracting Party. Examples of restrictions on the holder’s right to dispose are security interests and court orders concerning the disposal of the assets of the holder.
The USPTO will accept for submission and forward to the IB a request to record a restriction of a holder’s right to dispose of an international registration, or the release of such a restriction, only if all of the following conditions have been met:
- (1) (i) the restriction is the result of a court order; or (ii) the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder’s right of disposal, and the signature of the holder of the international registration cannot be obtained;
- (2) the party who obtained the restriction is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States;
- (3) the restriction or release applies to the holder’s right to dispose of the international registration in the United States; and
- (4) the restriction or release applies to the designation to the United States.
All other requests to record restrictions must be filed with the IB. 37 C.F.R. §§7.22, 7.24(a).
A request to record a restriction filed through the USPTO must include:
- The international registration number;
- The name and address of the holder of the international registration;
- The name and address of the party who obtained the restriction;
- A statement that the party who submitted the request: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States. Where a party’s address is not in the United States, the party must provide the address of its U.S. domicile or establishment;
- A statement that (i) the restriction is the result of a court order, or (ii) where the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder’s right of disposal, a statement, signed and verified or supported by a declaration under 37 C.F.R. §2.20, that, for the request to record the restriction, or release of the restriction, either the holder of the international registration could not obtain the signature of the party restricting the holder’s right of disposal because the party restricting the holder’s right of disposal no longer exists, or, after a good-faith effort, the holder of the international registration could not obtain the signature of the party restricting the holder’s right of disposal;
- A summary of the main facts concerning the restriction;
- An indication that the restriction, or the release of the restriction, of the holder’s right to dispose of the international registration applies to the designation to the United States or an international registration that is based on a U.S. application or registration; and
- The USPTO transmittal fee required by 37 C.F.R. §7.6.
The USPTO currently does not have a TEAS form available for requests to record a restriction of a holder's rights of disposal. A holder must complete an electronic copy of the official IB form MM19 available on the IB website at https://www.wipo.int/madrid/en/forms/. The IB will not accept requests that are not presented on the official IB form. The form may not be handwritten. Regs. Rule 25(1)(a); Admin. Instrs. §6(a).
The holder should attach the electronic copy of the completed form to the TEAS Petition to the Director for an International Application/Registration form. For permitted paper filers (see TMEP §1902.02(a)), complete the MM19 form online, print the completed form and submit it to the USPTO by mail, hand delivery, or courier service. The holder may mail the request using the first-class mail service of the USPS to the address in TMEP §305.01. See TMEP §§305.02-305.02(h) regarding certificate of mailing procedures and §§305.03-305.03(e) regarding Priority Mail Express® procedures. Alternatively, the holder may deliver the form by hand or courier. See TMEP §307 regarding hand delivery of documents to the USPTO.
Requests to record restrictions or releases may not be submitted by fax or email and, if submitted by such means, will not be accorded a date of receipt. See 37 C.F.R. §2.195(c).
If the request meets the requirements of 37 C.F.R. §7.24(b), the USPTO will forward it to the IB. 37 C.F.R. §7.24(c). If the request does not meet these requirements, the USPTO will refuse to forward the request to the IB, and will notify the holder of the reasons. The USPTO will not refund the transmittal fee. 37 C.F.R. §7.24(d).
If the IB determines that a request to record a restriction sent through the USPTO is irregular, the IB will notify both the USPTO and the holder. Regs. Rule 26(1). The holder must file a response to any notice of irregularity with the IB; the response may not be filed through the USPTO. 37 C.F.R. §7.24(e).
Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to restrictions of a holder’s right to dispose of an international registration. 37 C.F.R. §7.22.