1906.01    Recording Changes in International Register

The IB will record changes and other matters concerning international registrations in the International Register.  Such requests are governed by Articles 9 and 9bis and Regulations Rule 25.  Some of the changes that can be recorded in the International Register are:

  • Change in ownership of the registration;
  • Change of holder’s name and address;
  • Change in name or address of holder’s representative;
  • Limitation, renunciation, or cancellation of international registration.

Most requests to record changes must be filed with the IB on the IB’s forms, available on the IB website at https://www.wipo.int/madrid/en/forms/.  There are only two limited situations in which a request to record a change may be filed with the IB through the USPTO:

37 C.F.R. §7.22.

1906.01(a)    Change in Ownership of International Registration

The IB will record a change in ownership by assignment, merger, court decision, or operation of law at the request of the holder, the Contracting Party of the holder, or an interested person. Article 9; Regs. Rule 25(1)(a)(i).  The change may relate to some or all of the goods/services in some or all of the designated Contracting Parties.  A fee is required.

Most requests to record changes of ownership must be filed directly with the IB.  37 C.F.R. §§7.22, 7.23.  Form MM5 is available on the IB website at https://www.wipo.int/madrid/en/forms/  for that purpose.  The IB does not require copies of assignments or other supporting documents.  See TMEP §1906.01(a)(i) regarding the limited circumstances in which a request to record a change in ownership may be filed with the IB through the USPTO.

1906.01(a)(i)    Requirements for Submitting Changes in Ownership of International Registration Through the USPTO

The USPTO will accept for submission and forward to the IB a request to record a change of ownership only if all of the following conditions have been met:

  • (1)   the assignee cannot obtain the assignor’s signature on the request to record the change;
  • (2)   the assignee is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States; and
  • (3) the assigned goods/services applies to the designation to the United States or an international registration that is based on a U.S. application or registration.

See 37 C.F.R. §7.23.

No other requests to record changes of ownership may be filed through the USPTO.  37 C.F.R. §§7.22, 7.23.

A request to record a change of ownership 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 assignee of the international registration;
  • A statement that the assignee:  (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 an assignee’s address is not in the United States, the assignee must provide the address of its U.S. domicile or establishment;
  • A statement, signed and verified or supported by a declaration under 37 C.F.R. §2.20, that, for the request to record the assignment, either the assignee could not obtain the assignor’s signature because the holder no longer exists, or after a good-faith effort, the assignee could not obtain the assignor’s signature;
  • An indication that the assignment applies to the designation to the United States or an international registration that is based on a U.S. application or registration;
  • A statement that the assignment applies to all the goods/services in the international registration, or if less, a list of the goods/services in the international registration that have been assigned that pertain to the designation to the United States; and
  • The USPTO transmittal fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.23(a).

The USPTO currently does not have a TEAS form available for requests to record a change of ownership of an international registration.  A holder must complete an electronic copy of the official IB form MM5 available on the IB website at https://www.wipo.int/madrid/en/forms/.  The IB will not accept requests that are not submitted 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 MM5 form online, print the completed form and submit it to the USPTO by mail, hand delivery, or courier service. The holder should include a self-addressed, stamped postcard with the paper-filed request to record a change of ownership. Upon receipt, the USPTO will place a label indicating the receipt date on the postcard and return it to the holder. 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 request by hand or courier. See TMEP §307 regarding hand delivery of documents to the USPTO.

Requests to record changes of ownership may not be submitted by fax or email and, if submitted by such means, will not be accorded a date of receipt. 37 C.F.R. §2.195(c).

If the request meets the requirements of 37 C.F.R. §7.23(a),the USPTO will forward it to the IB.  37 C.F.R. §7.23(b).  If the request does not meet these requirements, the USPTO will not 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. §7.23(c).

If the IB determines that a request to record a change 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. §7.23(d).

Occasionally, extraordinary circumstances render the assignee of an international registration for which the USPTO was the Office of Origin unable to secure the signature of the holder of that registration.  In that instance, the assignee may petition the Director to waive the requirements of 37 C.F.R. §7.23(a)(6), (7), pursuant to 37 C.F.R. §2.146.  See TMEP Chapter 1700 regarding petitions to the Director.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration.  37 C.F.R. §7.22.

1906.01(a)(ii)    International Fees for Recording Changes of Ownership of International Registration

The international fee for a request to record a change of ownership must be paid directly to the IB in Swiss currency, and may be paid either before or after submission of the request to record.  37 C.F.R. §7.7(c).  However, fees paid after the document is received by the IB could result in a notice of irregularity.  See TMEP §1903.02 regarding payment of international fees to the IB.

1906.01(a)(iii)    Effect of Change of Ownership of International Registration

The validity of a change in ownership with respect to a particular Contracting Party is governed by the law of that Contracting Party.  The office of a designated Contracting Party may declare that a change in ownership has no effect in its territory.  The declaration must be sent to the IB within 18 months of the date of IB’s notification of the change.  Regs. Rule 27(4).

1906.01(a)(iv)    Dividing an International Registration After Change of Ownership with Respect to Some but Not All of the Goods/Services

When ownership of an international registration changes with respect to some but not all of the goods/services for all designated Contracting Parties, the IB will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to International Registration, B.II.84.67.01.

When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods or services, the USPTO will construe the IB’s notice as a request to divide. See 37 C.F.R. §§2.87(g), 2.171(b)(2).

See TMEP §1110.11 regarding division of a pending §66(a) application after a partial change of ownership, §1615.02 regarding division of a registered extension of protection after a partial change of ownership, and §501.07 regarding assignment of extensions of protection.

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.

37 C.F.R. §7.24(a).

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.

37 C.F.R. §7.24(b).

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.

1906.01(c)    Change of the Holder’s Name or Address

A request to record a change of the holder’s name or address must be filed with the IB; it cannot be filed through the USPTO.  37 C.F.R. §7.22.  The request may be filed using Form MM9 on the IB website at https://www.wipo.int/madrid/en/forms/.  Article 9bis; Regs. Rule 25(2).

1906.01(d)    Change of Name or Address of Representative

A request to record a change of the representative’s name or address must be filed with the IB; it cannot be filed through the USPTO.  37 C.F.R. §7.22.  The request may be filed using Form MM10 on the IB website at https://www.wipo.int/madrid/en/forms/.  

See TMEP §609.01(a) and §1904.02(i) regarding the correspondence address in a request for extension of protection to the United States.

1906.01(e)    Limitation, Cancellation, or Renunciation of an International Registration

Requests to record a limitation, cancellation, or renunciation of an international registration must be filed with the IB; they cannot be filed through the USPTO.  37 C.F.R. §7.22.  The request may be filed using forms for such requests on the IB website at https://www.wipo.int/madrid/en/forms.  Under Article 9bis, a holder may record the following restrictions:

  • Limitation of some or all of the goods/services with respect to some or all of the designated Contracting Parties (Regs. Rule 25(1)(a)(ii));
  • Cancellation of the international registration with respect to all the designated Contracting Parties for some or all of the goods/services (Regs. Rule 25(1)(a)(v));
  • Renunciation with respect to some but not all of the designated Contracting Parties for all the goods/services (Regs. Rule 25(1)(a)(iii)).

See TMEP §1904.02(f)(i) regarding limitations in general, §1904.03(g)(i)-(ii) regarding limitations or partial cancellations in pending requests for extension of protection (§66(a) applications), and §1904.15(a)–(b) regarding limitations or partial cancellations in registered extensions of protection to the United States (§66(a) registrations).

1906.01(f)    Correction of Errors in International Registration

The IB will correct errors in an international registration at the request of the holder or the Office of Origin.  Regs. Rule 28(1).  Requests to correct errors in international registrations in which the USPTO was the Office of Origin must be filed directly with the IB, unless the error was made by the USPTO.

The office of a designated Contracting Party may declare in a notification of provisional refusal that protection can no longer be granted to an international registration as corrected.  A new refusal period under Article 5 of the Protocol and Regulations Rules 16-17 starts to run from the date of the correction, but only in respect to grounds that did not exist prior to the correction.  Regs. Rule 28(3).

See TMEP §1904.03(f) regarding corrections to §66(a) applications, and §1904.14 regarding corrections to registered extensions of protection.

1906.01(g)    Merger of International Registrations

Where the same party is the holder of two or more international registrations of the same mark due to a partial change in ownership, that party may request the IB to record a merger of the registrations.  Regs. Rule 27ter(1).  The request must be filed with the IB; it cannot be filed through the USPTO.  37 C.F.R. §7.22.

1906.01(h)    License

Under Regulations Rule 20bis(1), a holder may file a request to record a license, for amendment of the recording of a license, or for cancellation of the recording of a license with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22.  The request may be filed using forms for such requests on the IB website at https://www.wipo.int/madrid/en/forms/.  A designated Contracting Party may declare that the recording of a license has no effect in its territory.  The declaration must be sent within 18 months of the IB’s notification of recording of the license.  Regs. Rule 20bis(5).

1906.01(i)    Changes that Cannot Be Made to International Registration

Mark in International Registration Cannot Be Changed.  There is no provision for a mark to be amended in any way, at any time, even if the mark in the basic application or basic registration changes.   Guide to International Registration, B.II.93.81.02.

Goods/Services in International Registration Cannot be Expanded.  It is not possible to expand the list of goods/services, even if the added goods/services were listed in the basic application or registration.   Guide to International Registration, B.II.93.81.03.