1904    Request for Extension of Protection of International Registration to the United States

1904.01    Filing Request for Extension of Protection to United States

The holder of an international registration may file a request for extension of protection of that registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a).  The request for extension of protection to the United States may be included in the international application, or in a subsequent designation made after the IB registers the mark.  The IB will transmit the request for extension of protection to the United States to the USPTO electronically.  The USPTO refers to a request for extension of protection to the United States as a "§66(a) application."  37 C.F.R. §7.25(b).

1904.01(a)    §66(a) Basis for U.S. Applications

Section 66(a) of the Trademark Act provides a basis for filing in the United States based on the Madrid Protocol.  See 37 C.F.R. §§2.34(a)(5), 2.44(a)(4)(v), 2.45(a)(4)(v).  A basis under §66(a) may not be combined with any other basis.  37 C.F.R. §§2.34(b), 2.44(c), 2.45(c).  A §66(a) applicant may not change the basis unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c).  37 C.F.R. §2.35(a).  See TMEP §1904.09 regarding transformation.

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO and cannot be added or substituted as a basis in an application originally filed under §1 or §44.

1904.01(b)    Filing Date

If a request for extension of protection of an international registration to the United States is made in an international application, the filing date of the §66(a) application is the international registration date.  If a request for extension of protection to the United States is made in a subsequent designation, the filing date of the §66(a) application is the date on which the subsequent designation was recorded by the IB.  15 U.S.C. §1141f(b); 37 C.F.R. §7.26.

1904.01(c)    Declaration of Intent to Use Required

Section 66(a) of the Trademark Act requires that a request for extension of protection to the United States include a declaration of bona fide intention to use the mark in commerce. 15 U.S.C. §§1141f(a).  For a trademark or service mark application, such declaration must specify that the applicant/holder has a bona fide intention to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation. 37 C.F.R. §§2.33(e)(1), 2.34(a)(5); see 15 U.S.C. §§1127,  1141(5).  This declaration must also include a statement that: the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; the signatory believes the applicant/holder to be entitled to use the mark in commerce on or in connection with the goods or services specified in the international application/subsequent designation; and to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive.  37 C.F.R. §§2.33(e)(2)-(4), 2.34(a)(5); see 15 U.S.C. §§1127,  1141(5).

The declaration must be signed by:  (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14  who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.  37 C.F.R. §2.193(e)(1); TMEP §611.03.

The USPTO has provided the IB a declaration of bona fide intention to use the mark in commerce for a trademark or service mark, which is part of the official IB form package for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18).  Instructions as to who is a proper party to sign the declaration have also been provided to the IB.

The IB will ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO.  The IB does not send the verified statement to the USPTO.

The verified statement remains part of the international registration on file with the IB.  37 C.F.R. §2.33(e).  Accordingly, the examining attorney will not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of a trademark or service mark application on file with the IB.  In cases where the applicant voluntarily files a substitute declaration with the USPTO, the substitute declaration will be examined according to the same standards used for examining any other declaration.  

See TMEP §1904.02(d) for information regarding the verified statement for a §66(a) application for a collective trademark, collective service mark, collective membership mark, or certification mark.

See also TMEP §804.05 for further information about declarations in §66(a) applications for trademarks and service marks, §1303.01(a)(v) and §1303.01(b)(ii) for information about declarations in §66(a) applications for collective trademarks and collective service marks, §1304.02(a)(v) and §1304.02(b)(ii) for declarations in §66(a) applications for collective membership marks, and §1306.02(a)(v) and §1306.02(b)(ii) for declarations in §66(a) applications for certification marks.  

1904.01(d)    Use Not Required  

Use in commerce prior to registration is not required.  15 U.S.C. §1141h(a)(3).  However, after registration, a holder is required to periodically file an affidavit of use or excusable nonuse under §71 of the Trademark Act, 15 U.S.C. §1141k,  to maintain a registered extension of protection.  37 C.F.R. §7.36(b).  See TMEP §1613 for additional information about this affidavit.

1904.01(e)    Priority  

A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention for the Protection of Industrial Property if:

• (1) The request for extension of protection contains a claim of priority;
• (2) The request for extension of protection specifies the filing date, serial number, and country of the application that forms the basis for the claim of priority; and
• (3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4A(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4C(4) of the Paris Convention).

15 U.S.C. §1141g; Article 4(2);  see also Paris Convention for the Protection of Industrial Property art. 4D, Mar. 20, 1883.

To be eligible for a claim of priority in a §66(a) application, the holder must file the request for extension of protection to the United States within 6 months of the date of the filing that forms the basis of the priority claim.  If the United States is designated for an extension of protection in an international application, the international registration date cannot be later than 6 months after the date of the filing that formed the basis of the priority claim.  If a request for extension of protection to the United States is made in a subsequent designation, the date of recordal of the subsequent designation cannot be later than 6 months after the date of the filing that formed the basis of the priority claim.  The USPTO's electronic systems use the dates provided in the international registration to automatically calculate whether an application receives the benefit of a priority claim.  If the "Priority Claimed" field indicates "YES," the "Priority Claimed Date" is to be treated as the effective filing date.  See TMEP §206.02 for information on claiming priority under §67, 15 U.S.C. §1141g.  If the "Priority Claimed" field indicates "NO," this means the priority claim is outside the 6-month filing date that forms the basis of the priority claim, even if priority information is included in the §66(a) application. If otherwise issuing an Office action, an advisory may be included to notify the applicant that their priority claim will not be honored. However, the advisory is not necessary if the application is in condition for publication upon initial examination.

In some cases, another U.S. application filed after the §66(a) applicant’s priority date may proceed to publication or registration because the request for extension of protection for the §66(a) application was not yet of record in the United States when the examining attorney searched USPTO records for conflicting marks. If the USPTO learns that a §66(a) application is entitled to priority over another pending application before the other mark registers, the USPTO will take appropriate action to give the §66(a) application the priority to which it is entitled. The §66(a) applicant may bring the priority-date issue to the USPTO’s attention by submitting a letter of protest in the other pending application. See TMEP §1715 regarding letters of protest.

If an examining attorney discovers a conflicting application entitled to priority under §66(a) after taking action in a case, the examining attorney must issue a supplemental action correcting the situation. If the mark has been published, the examining attorney must request jurisdiction before issuing the action. See TMEP §1504.01 and §1504.04(a) regarding the examining attorney’s jurisdiction.

However, if the conflicting mark has already registered, the USPTO does not act to cancel the registration sua sponte. The §66(a) applicant may seek to cancel the registration by filing a petition for cancellation with the Trademark Trial and Appeal Board.

1904.01(f)    Filing Fee

The filing fee for a §66(a) application will be sent to the USPTO by the IB.  The examining attorney should not require additional filing fees during examination, except where the application is divided due to a change in ownership with respect to some but not all of the goods/services.  See Article 8 and Regs. Rules 34–38 regarding international fees, and TMEP §1110.11 regarding dividing a §66(a) application.

1904.01(g)    Constructive Use

Under Trademark Act §66(b), unless extension of protection is refused, the filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c), 15 U.S.C. §1057(c), as of the earliest of the following:

• (1) The international registration date, if the request for extension of protection to the United States was filed in the international application;
• (2) The date of recordal of the subsequent designation requesting extension of protection, if the request for extension of protection to the United States was made after the international registration date; or
• (3) The date of priority claimed pursuant to §67.

1904.01(h)    May Not be Based on USPTO Basic Application or Registration

An international registration in which the United States is the Office of Origin (i.e., an international registration based on a basic application pending in the USPTO or a basic registration issued by the USPTO) may not be used to obtain an extension of protection to the United States.  15 U.S.C. §1141e(b); Article 3bis.  The IB will not send a request for extension of protection to the United States if the international registration is based on a USPTO basic application and/or registration.

1904.01(i)    Requirement for Representation Based on Domicile of §66(a) Applicant

Foreign-domiciled applicants must be represented before the USPTO by a qualified U.S. attorney. An applicant whose domicile is not located within the United States or its territories (see TMEP §§601.01, 601.01(b)–(b)(1) regarding domicile) must be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (see TMEP §602 regarding persons authorized to practice before the USPTO in trademark matters). 37 C.F.R. §§2.11(a), 7.25(a); see TMEP §602. See TMEP §601.01 regarding determining domicile and the examination procedure for requiring representation of foreign-domiciled applicants.

Attorney identification information required. If the applicant is represented by an attorney qualified under 37 C.F.R. §11.14  or is required to appoint such an attorney under 37 C.F.R. §2.11(a)  due to its foreign domicile, an applicant must include the individual attorney’s name, postal address, email address, and bar information. 37 C.F.R. §§2.17(b)(3), 2.32(a)(4), 7.25(a). See TMEP §602.01(a) regarding the requirement for attorney identification information.

The first Office action will generally include requirements to appoint a qualified U.S. attorney and to provide his or her bar information and postal and email addresses because there currently are no provisions for designating such an attorney, attorney’s bar information, or postal and email addresses in a request for extension of protection received from the IB. See 37 C.F.R. §§2.11(a), 2.23(b), 2.32(a)(4), 7.25(a); TMEP §601. In addition, if the record is not clear that the applicant’s domicile address is outside the United States, the first action will also include a requirement for the domicile address. See TMEP §§601.01-601.01(c). However, if the application is otherwise in condition for approval for publication upon first action, the application can be approved without requiring the §66(a) applicant to appoint a U.S.-licensed attorney and provide his or her bar information and postal and email addresses prior to publication.

1904.01(j)    Requirement for Email Address of §66(a) Applicant

Applicants must provide and maintain a valid email address for correspondence. 37 C.F.R. §§2.23(b), 2.32(a)(2); see 37 C.F.R. §7.25(a). Although providing an email address is required for applicants filing under Trademark Act Sections 1 and/or 44 (37 C.F.R. §2.21(a)(1); TMEP §202), this is not a filing date requirement for a Section 66(a) application because these are transmitted to the USPTO by the International Bureau (IB) and generally do not include an e-mail address for receiving USPTO correspondence. See TMEP §803.05(b) regarding the examination procedure for requiring an applicant’s email address.

If a Section 66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney will not require the owner to first provide an email address prior to publication. However, the TEAS forms will require an email address for the owner in any subsequent submissions.

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

1904.02(a)    Examined as Regular Application on the Principal Register 

Under §68(a)(1) 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(a)(1).   However, 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), 2.75(c).

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. §§2.21, 2.22, 2.76, 2.88, 2.89, 2.130, 2.131, 2.160-2.166, 2.168, 2.173, 2.175, 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. 37 C.F.R. §7.25(a). All rules in 37 C.F.R. Part 11  relating to representation of others before the USPTO also apply to requests for extension of protection.  See id.

See TMEP §1904.02(d) regarding specific examination issues relevant to a §66(a) application for a collective or certification mark.

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 classification (unless such change is to agree with a notice of correction from the IB that specifically changes classification);
• 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 may 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 the 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,  1126. See 37 C.F.R. §7.25(a).  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.

The language inside the parentheses should not be examined, but the goods/services preceding the parenthetical language should be examined and an acceptable amendment required that is definite and within the scope of the class assigned by the IB. For example, the §66(a) application identified the goods as "Accessories for domestic animals (in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Regulations)," in Class 21. The wording "accessories for domestic animals" should be examined and an acceptable amendment within Class 21 suggested, such as "accessories for domestic animals, namely, pet bowls, litter trays, cleaning sponges, brushes, and cages." The parenthetical wording "(in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Regulations)" and the parentheses must not be part of any suggested amendment and must not appear in the final identification of goods/services.

If the wording preceding the parenthetical language is definite according to USPTO practice, the identification should be accepted. The parenthetical language "(in the opinion of the International Bureau, the terms are too vague for the purposes of classification - see Rule 13(2)(b) of the Regulations)" and the parentheses must be removed and must not appear in the final identification of goods/services. If it is otherwise necessary to issue an Office action, the action must include notice that the parenthetical language and the parentheses will be removed from the identification. If it is otherwise unnecessary to issue an Office action, a no-call examiner’s amendment must be issued to document the removal of the wording. A no-call examiner’s amendment is acceptable in this situation because the parenthetical language is provided to the USPTO for informational purposes only and documentation of the removal is for purposes of notice to the applicant only and does not "amend" the application.

If the initial identification of goods/services in the §66(a) application is definite, but misclassified under U.S. 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), 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.53.32.03.  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.

These examination procedures apply similarly to collective and certification marks. See TMEP §1304.02(c) regarding identifications in collective membership mark applications, §1304.02(d) regarding classification in §66(a) collective membership applications, §1306.02(c) regarding identifications in certification mark applications, and §1306.02(d) regarding classification in §66(a) certification mark applications.

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 amendment to the identification would identify goods or services in the assigned class, 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.  

• 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 "footwear" in Class 9. The wording is definite, but misclassified. It could refer to goods in the assigned class with further amendment. The examining attorney may require the applicant to amend these goods to "protective industrial footwear" and/or "protective footwear for the prevention of accident or injury."

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) ).

• 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 "protective helmets" in Class 9 or "orthodontic headgear" 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 consoles 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 "downloadable 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.

• 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.

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 or request to record a limitation 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 the Director under 37 C.F.R. §2.146  to review the requirement, if permitted by 37 C.F.R. §2.63(b)(2). See TMEP §1501.01 regarding appealable matter and §1704 regarding petitionable subject matter.

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 or 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 or request to record a limitation 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 the Director under 37 C.F.R. §2.146  to review the requirement, if permitted by 37 C.F.R. §2.63(b)(2). See TMEP §1501.01 regarding appealable matter and §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)    Examination Issues Specific to Certification and Collective Marks

Clarification of Mark Type

A §66(a) application may indicate that the mark is a "Collective, Certificate or Guarantee Mark." In such a case, the examining attorney must require the applicant to clarify the type of mark for which it seeks protection, unless it is already clear from the record. However, if the §66(a) application does not indicate that the mark is a "Collective, Certificate or Guarantee Mark," the applicant may not amend the application to seek registration of a collective or certification mark. Similarly, if the §66(a) application indicates that the mark is a "Collective, Certificate or Guarantee Mark," the applicant may not amend the application to seek registration of a trademark or service mark. If the statement was omitted from or included in the application by mistake, the applicant may request a correction of the record from the IB. The applicant may also request suspension of the application and must include a copy of the request for correction filed with the IB. See TMEP §716.02(g).

Classification

If a §66(a) applicant indicates that the mark is a certification mark or collective membership mark, the USPTO will not reclassify it into U.S. Class A, B, or 200. See 37 C.F.R. §§2.44(a)(3)(ii), 2.45(a)(3). U.S. Classes A, B, and 200 are classes from the prior U.S. classification system that are still used in the United States to classify certification marks for goods (U.S. Class A), certification marks for services (U.S. Class B), and collective membership marks (U.S. Class 200).  37 C.F.R. §§6.3, 6.4. These classes are not included in the international classification system under the Nice Agreement.

Verified Statement

The verified statement required for a §66(a) application, referenced in TMEP §1904.01(c), is not part of the international registration on file with the IB for a collective trademark, collective service mark, collective membership mark, or certification mark; therefore, the examining attorney must require the verified statement during examination. TMEP §§1303.01(a)(v), (b)(ii), 1304.02(a)(v), (b)(ii), 1306.02(a)(v), (b)(ii); see 37 C.F.R. §§2.44(a)(4)(v), (b)(2), 2.45(a)(4)(v)(B), (b)(2).

Additional Requirements

The examining attorney must also require the §66(a) applicant to comply with the additional requirements for the particular type of mark, i.e., collective trademark, collective service mark, collective membership mark, or certification mark. See 37 C.F.R. §§2.44, 2.45. See TMEP §§1303–1303.02(b) regarding the requirements for collective trademark and collective service mark applications, §§1304–1304.03(c) regarding the requirements for collective membership mark applications, and §§1306–1306.06(c) regarding the requirements for certification mark applications.

1904.02(e)    Corrections to an International Registration

1904.02(e)(i)    Corrections to Goods/Services/Classes

When the IB determines that there is an error concerning the goods/services and/or classification listed in 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 the United States), 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 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 the amended language.  See TMEP §1402.07(e). However, if a correction adds goods/services that were omitted from the basic list of goods/services in error, they would be inserted into the identification and subject to USPTO practice with regard to definiteness.

See also TMEP §1904.03(f) regarding notifications of corrections in general, §1904.14 regarding corrections to registered extensions of protection, and §1906.01(f) regarding filing requests for correction with the IB.

1904.02(f)    Restrictions to Goods/Services

A restriction is a narrowing amendment to the goods/services in some or all pending and registered extensions of protection. Some types of restrictions also impact the listing of goods/services in the international registration. Restrictions include limitations, cancellations, and ceasings of effect. A limitation is an amendment to some or all of the goods/services in one or more extensions of protection that the holder files with the IB. The listing of goods/services in the international registration are not impacted by limitations. Article 9bis; Regs. Rule 25(1)(a)(ii); Guide to International Registration, B.II.70.53.01 and B.II.17.07.61. A cancellation is an amendment to some or all of the goods/services in the international registration that then affects all of the extensions of protection. A cancellation is filed by the holder with the IB. Article 9bis; Regs. Rule 25(1)(a)(v). A ceasing of effect occurs when some or all of the goods/services have been removed from the basic application or registration due to a judicial action or proceeding or by voluntary action by the holder. For a period of five years from the date of the international registration, such changes to the listing of goods/services in the basic application or registration will result in a ceasing of effect of those goods/services in the international registration and all extensions of protection. The Office of origin notifies the IB of the ceasing of effect, and the IB then notifies all of the designated Contracting Parties. Article 6(3); Regs. Rule 22. The effective date of a restriction for determining priority of the filing is its date of recordal in the international register. Regs. Rule 27(1).

See TMEP §1904.02(f)(i) and §1906.01(e) regarding limitations, §1904.02(f)(iii), §1904.08, and §1906.01(e) regarding cancellations, and §1904.02(f)(iv) and §1904.15(c) regarding ceasings of effect.

1904.02(f)(i)    Limitations to Goods/Services

The holder of an international registration may file with the IB a voluntary amendment of the goods/services that narrows the scope of the identification in one or more designations, called a limitation. 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 designated Contracting Parties. See TMEP §1906.01(e) regarding the filing of a request to record a limitation with the IB.

An international application or subsequent designation may contain limitations of the listing of goods/services in respect of one or more designated Contracting Parties. Regs. Rule 9(4)(a)(xiii). A limitation also may be filed with the IB separately from the international application or subsequent designation. Article 9bis(iii). Upon recordation, the IB will notify the USPTO if a U.S. application or registration is affected by the limitation. The limitation may appear in the §66(a) application form or in the application record as a separate filing. See TMEP §1904.03(g)(i) regarding limitations in pending requests for extension of protection (§66(a) applications) and §1904.15(a) regarding limitations in registered extensions of protection (§66(a) registrations).

A limitation may only restrict the scope of the goods/services; it may not broaden or extend the listing of goods/services in a pending or registered extension of protection beyond the scope of the listing of goods/services in the international registration or beyond the operative listing of goods/services. See TMEP §1402.07(a), §1904.02(c)-(c)(iv).

See also TMEP §1904.03(g)(i) regarding determining whether a limitation is within the scope of the basic goods/services and regarding assessing limited goods/services with respect to interceding amendments to the identification and any prior limitations.

1904.02(f)(ii)    Limitations vs. Amendments to Goods and Services

A limitation filed with the IB may affect pending or registered extensions of protection in some or all of the Contracting Parties. By contrast, an amendment to the identification of goods/services in a §66(a) application is comparable to a limitation affecting only the United States in that the amendment affects only the U.S. application. Any extensions of protection to other Contracting Parties are unaffected by amendments to a §66(a) application.  

While a limitation filed with the IB may render the identification of goods/services in the §66(a) application sufficiently definite, merely recording a limitation with the IB is not considered a response to an Office Action. See 37 C.F.R. §§2.62, 2.65(a); TMEP §1904.03(g)(i). If the examining attorney issued an Office action prior to notification of the limitation, a proper response to the Office action still must be received within the response time period.  See TMEP §1904.03(g)(i).

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

1904.02(f)(iii)    Partial Cancellation of an International Registration

The holder of an international registration may request the removal or narrowing of some of the goods/services from the international registration by filing a cancellation request with the IB. If such a request complies with applicable requirements, the IB records the partial cancellation in the international registration and notifies all of the Offices of the designated contracting parties. As the cancelled goods are no longer part of the international registration, they are no longer eligible for extension of protection. When the USPTO receives the notification of the partial cancellation, the USPTO will enter it into the record and amend the listing of goods/services to conform to the partial cancellation. See TMEP §1904.03(g)(ii) regarding partial cancellations in a pending request for extension of protection and §1904.15(b) regarding partial cancellations in registered extensions of protection to the United States.

1904.02(f)(iv)    Partial Ceasing of Effect of a Basic Application/Registration

A restriction to the listing of the goods/services in the international registration may occur due to the partial ceasing of effect of the basic application/registration on which the international registration is based. A partial ceasing of effect occurs when some of the goods/services have been removed from or narrowed in the basic application or registration. In such a case, the Office of origin notifies the IB, which in turn records the partial ceasing of effect in the international registration by amending the listing of goods/services in the international registration to reflect the listing in the basic application or registration. The IB then notifies all the Offices of the designated contracting parties. As the ceased goods/services are no longer part of the international registration, they are no longer eligible for extension of protection. Upon receipt of notification of ceasing of effect, the USPTO will enter it into the record and amend the listing of goods/services to conform to the partial ceasing of effect. See TMEP §1904.03(g)(iii) regarding partial ceasings of effect in a pending request for extension of protection and §1904.15(c) regarding partial ceasings of effect in registered extensions of protection to the United States.

1904.02(g)    Refusal Must Be Made Within 18 Months  

Under §68(c) of the Trademark Act and Article 5(2) 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.  See Regs. Rule 17. If the provisional refusal meets the applicable requirements (see TMEP §1904.03), the IB will process the refusal and send it to the holder (i.e., the §66(a) applicant or their representative, if one is designated).  Regs. Rule 17(4). 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 first and any subsequent Office action must be filed with the USPTO (using the Trademark Electronic Application System (TEAS); see 37 C.F.R. §§2.23(a), 7.25; TMEP §301.01), not with 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)(2); 37 C.F.R. §2.62(a)(1)(ii); TMEP §1904.03(c). Failure to respond to an Office action within the time provided will result in abandonment of the application. 15 U.S.C. §1062(b)(2);  37 C.F.R. §2.65(a). See TMEP §711 regarding the deadline for response to an Office action and §718.02 and §§718.03-718.03(a) regarding abandonment for failure to respond or incomplete response to an Office action.

A priority action generally may not be issued as a first Office action in a §66(a) application if the applicant has not yet appointed a qualified U.S. attorney. See TMEP §§712-712.03. In addition, a suspension notice generally may not be issued as a first Office action in a §66(a) application. See TMEP §§716, 716.02-.02(i).

An examiner’s amendment or a combined examiner’s amendment and priority action (see TMEP §§707–707.03, 708.05) may not be issued as a first Office action because the IB will not accept such amendments.  However, in rare circumstances, a no-call examiner’s amendment may be issued in a first Office action, for example, to remove certain parenthetical wording from an identification of goods/services if the application is otherwise in condition for approval for publication. The examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. See TMEP §601.01(a) regarding applicants with a non-U.S. domicile, §803.05(b) regarding applicant’s email address as a required element of an application, and TMEP §1904.02(c) regarding parenthetical language added by the International Bureau to the listing of goods/services. Examiner’s amendments and combined examiner’s amendments and priority actions may be issued as second and subsequent actions, if properly authorized. See TMEP §707.01 regarding who can authorize examiner’s amendments and §708.02 regarding who can authorize priority actions.

If the applicant has appointed a qualified U.S. attorney in the §66(a) application, the USPTO will issue second and subsequent Office actions directly to the attorney.  See 37 C.F.R. §2.11(a), 2.18(a)(2), 7.25(a). If the applicant has not appointed a qualified U.S. attorney, second and subsequent Office actions will issue directly to the applicant. 37 C.F.R. §§2.18(a)(1), 7.25(a). See TMEP §§609.01–609.01(a), and §1904.02(i) regarding second and subsequent Office actions and other 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. If the IB communicates that a §66(a) applicant has an appointed representative, the USPTO does not recognize this representative as the applicant's attorney without clarification of his or her qualifications under 37 C.F.R.§2.17  and §11.14. TMEP §602.03(c). However, if the §66(a) applicant’s domicile address in the application is outside the United States or its territories, the first Office action will include a requirement for the applicant to appoint an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14(a)  and to provide the attorney’s name, postal and email addresses, and bar information. See 37 C.F.R. §§2.11(a), 2.17(b)(3), 2.32(a)(4), 7.25(a); TMEP §602.03(c). Additionally, the first Office action will include a requirement for the applicant’s email address; which is not currently included in the application form. See 37 C.F.R. §§2.23(b), 2.32(a)(2), 7.25(a). See TMEP §§601-601.01(e) regarding the requirement for representation based on foreign domicile of mark owner, §§602-602.03(b) regarding persons authorized to practice before the USPTO in trademark matters, §602.03(c) regarding representatives of holders of international registrations, and §604.01 regarding recognition as a representative in a trademark matter.

If a qualified U.S. attorney is recognized as the applicant’s representative, such attorney will be the correspondent in the application and will receive all USPTO communications. 37 C.F.R. §2.18(a)(2).

The applicant must maintain current and accurate correspondence addresses for itself and its attorney. 37 C.F.R. §2.18(c).

See TMEP §609.01 regarding establishing the correspondence address in U.S. applications and §609.01(a) regarding correspondence in §66(a) applications. See TMEP §1904.02(h) regarding Office actions in §66(a) applications.

1904.02(j)    Mark May Not Be Amended

The Madrid Protocol and the 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, B.II.93.81.02, 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).  Examples of such impermissible amendments include deletion of a color claim and deletion of entity designations or generic terms from the mark, even if otherwise immaterial. However, the applicant still must comply with U. S. requirements regarding drawings and descriptions of the mark.   See TMEP §1904.02(k).

In limited circumstances, an applicant may 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 may not be amended, the applicant must comply with the U.S. requirements regarding drawings of the mark.  15 U.S.C. §1141h(a); 37 C.F.R. §§2.52, 7.25(a).

If the drawing does not meet U.S. 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 U.S. 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 §807.10 regarding drawings of three-dimensional marks and Chapter 1700 regarding petitions.

If the international registration contains a color claim and/or color location statement, but it is incorrect, incomplete, or inconsistent with the color(s) shown on the drawing, the color claim and/or the color location statement must be corrected to conform to the color(s) depicted on the drawing. See TMEP §§807.07(a)-(a)(ii), (c).

No color claim and color drawing. 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 substitute drawing that is a black-and-white reproduction of the same mark depicted in the international registration.  See TMEP §807.07(b).

Color claim and black-and-white drawing. If the international registration contains a color claim, but there is a black-and-white drawing in the international registration, the applicant must: (1) submit a substitute drawing that is a color reproduction of the same mark depicted in the international registration; (2) state for the record that the substitute drawing is a color reproduction of the same mark depicted in the international registration; and (3) submit a color location statement describing where the color(s) appear(s) in the mark. See TMEP §§807.07(a)–(a)(ii). If the color claim and/or color location statement is incorrect, incomplete, or inconsistent with the color(s) shown on the substitute drawing, the color claim and/or the color location statement must be corrected to conform to the color(s) depicted on the substitute drawing. See TMEP §§807.07(a)–(a)(ii), (c). The applicant may not delete the color claim because it is part of the international registration. See 15 U.S.C. §1141e; Articles 3-4; Regs. Rules 9(4)(vii), 9(5)(d)(v), 14(2)(i). If the color claim was included in the §66(a) application by mistake, the applicant may request a correction of the record from the IB. The applicant may also request suspension of the application and must include a copy of the request for correction filed with the IB. See TMEP §716.02(g) regarding suspending an application pending receipt of a correction from the IB and §1906.01(f) regarding requesting correction of errors in the international registration.

A §66(a) applicant must also comply with U.S. requirements regarding descriptions of the mark.  37 C.F.R. §§2.37, 2.52(b)(5), 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 U.S. requirements for a detailed description of the mark.  See TMEP §1011.04.

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).

1904.03    Notice of Refusal  

1904.03(a)    Notice Must Be Sent Within 18 Months  

Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit:

• (1) A notification of refusal based on examination;
• (2) A notification of refusal based on the filing of an opposition; or
• (3) A notification of the possibility that an opposition may be filed after expiration of the 18-month period.  If the USPTO notifies the IB of the possibility of opposition, it must send the notification of refusal within 7 months after the beginning of the opposition period, or within one month after the end of opposition period, whichever is earlier.

15 U.S.C. §1141h(c); Article 5.

If the USPTO does not send a notification of refusal of the request for extension of protection to the IB within 18 months, the request for extension of protection cannot be refused.  15 U.S.C. §1141h(c)(4); Article 5(5); Regs. Rules 17(2)(iv), 18(1)(a)(iii).  If the USPTO sends a notification of refusal, no grounds of refusal other than those set forth in the notice can be raised more than 18 months after the date on which the IB forwards the request for extension of protection to the USPTO. 15 U.S.C. §1141h(c)(3).

If upon re-examination the examining attorney determines a new ground of refusal exists that should have been raised in the first Office action, a second Office action raising this new ground may be issued only if time remains in the 18-month period.  In such a case, the examining attorney must ensure that a notification of the new ground of refusal is sent to the IB.

1904.03(b)    Requirements for Notice of Refusal

A final decision is not necessary; a provisional refusal is sufficient to meet the 18-month requirement.  Under Regulations Rule 17(2), a notice of provisional refusal must be dated and signed by the USPTO and must contain:

• The number of the international registration, preferably accompanied by an indication of the mark;
• All grounds of refusal;
• If there is a conflicting mark, the filing date, serial number, priority date (if any), registration date and number (if available), name and address of the owner, reproduction of the conflicting mark, and list of goods/services;
• A statement that the provisional refusal affects all the goods/services, or a list of the goods/services affected;
• The procedures and time limit for contesting the refusal, i.e., period for response or appeal of the refusal, and the authority with which an appeal can be filed;
• If the refusal is based on an opposition, the name and address of the opposer.

The IB will record the provisional refusal in the International Register and transmit it to the holder of the registration.  Article 5(3); Regs. Rule 17(4).

1904.03(c)    §66(a) Applicant Must Respond to Notification of Provisional Refusal

A holder of an international registration who applies for an extension of protection to the United States (also known as the §66(a) applicant) will receive an initial notification of refusal through the IB.  The holder must respond directly to the USPTO, not the IB.    Standard examination procedures are used to examine §66(a) applications.  15 U.S.C.  §1141h.

See TMEP §1904.02(h) regarding Office actions and responses in §66(a) applications and §1904.02(i) regarding who can correspond with the USPTO in a §66(a) application.

1904.03(d)    Refusal Pertaining to Less than All the Goods/Services  

If a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark may be protected for the remaining goods/services, even if the holder does not respond to the notification of refusal.  Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C. §§1141h(c), 1141i(a), provide that an application under §66(a) of the Trademark Act is automatically protected with respect to any goods or services for which the USPTO has not timely notified the IB of a refusal by either ex officio examination or opposition.

Accordingly, 37 C.F.R. §2.65(a)(1)  provides that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to respond, or respond completely, to the refusal or requirement, the application shall be abandoned only as to those particular goods/services.  See TMEP §718.02(a) for further information about partial abandonment.

1904.03(e)    Confirmation or Withdrawal of Provisional Refusal  

If the USPTO has sent a notice of provisional refusal, once the procedures regarding the refusal are complete, the USPTO must notify the IB that:

• (1) protection is refused for all goods/services;
• (2) the mark is protected for all goods/services; or
• (3) the mark is protected for some specified goods/services.

Regs. Rule 17(5).  The IB will record this notice and send it to the holder.

1904.03(f)    Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection

When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio.  The IB will also correct an error at the request of the holder or the Office of Origin.  Regs. Rule 28(1).  If the IB notifies the USPTO of a correction with regard to an international registration, the USPTO may declare in a notification to the IB that protection cannot, or can no longer, be granted to the international registration as corrected.  Such a declaration must be sent to the IB within 18 months of notification of the correction.  This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international registration as originally notified to the USPTO.  Regs. Rule 28(3).

Unlike limitations, which affect only the listing of goods and/or services, a correction can involve any element of the international registration, including the mark for which registration is sought, the effective filing date, or the claim of priority.  Corrections are not to be treated as amendments from the applicant.  They are also not responses to Office actions and do not toll the statutory response period.

If the MPU determines that a correction does have effect in the United States and does not require review by the examining attorney, the correction will be entered into the Trademark database.  The MPU trademark specialist will update the prosecution history in the Trademark database to reflect that the processing of the correction has been completed.

If the MPU determines that review by the examining attorney is required, the MPU will notify the examining attorney of the correction and the examining attorney will determine whether the correction raises any new grounds for refusal or basis for a new requirement. If the examining attorney determines that the correction raises new issues, he or she must issue an Office action refusing registration or making the necessary requirements and indicating the reasons why, supported by evidence, where appropriate. The examining attorney must also ensure that the new Office action is sent to the IB. The applicant may argue against the refusal or requirement, and, if such refusal or requirement is made final, file an appeal to the Trademark Trial and Appeal Board or petition to the Director pursuant to 37 C.F.R. §2.146.

See also TMEP §1904.14 regarding corrections to registered extensions of protection and §1906.01(f) for information about filing requests for correction with the IB.

1904.03(g)    Notification of Restrictions to Goods/Services with Respect to a Pending Request for Extension of Protection

1904.03(g)(i)    Limitations to Goods/Services

Limitation Filed Separately from §66(a) Application

The Madrid Processing Unit (MPU) reviews all separately filed limitations and will notify the examining attorney that a limitation was received.

Scope is determined according to the operative identification of goods and/or services when the limitation is examined. Limitations are processed in the order of their effective dates, which appears in the limitation form as the date of recordal in the international register. See Regs. Rule 27(1). The operative identification is the last acceptable amended identification, or the original identification if no amendment has been accepted. TMEP §§1402.07(d)-(e). Therefore, the applicant is not bound by the scope of the identification in a limitation that exceeds the scope of the application or any previously accepted amendments, but rather by the identification of goods and/or services that were operative prior to the recordal date of the limitation. 37 C.F.R §§2.71(a), 7.25(a); TMEP §1904.02(c)(iv).

If the USPTO receives a limitation from the IB before the first Office action issues, the examining attorney will include any requirements arising from the limitation in the first Office action. If the separately filed limitation puts the application in condition for publication before a first Office action issues, the examining attorney still must issue an Office action raising all of the requirements based on the application as filed. The USPTO is required to notify the IB of all grounds for refusing registration of the application as filed. 15 U.S.C §1141h(c); Article 5. The examining attorney must state in the Office action that the limitation resolves the requirements related to the original identification of goods and/or services. Once the MPU sends the Office action to the IB, the examining attorney may enter the limitation via an examiner’s amendment, after securing approval of the amendment from the proper person. See 37 C.F.R §§2.32(a)(4), 2.62(b), 2.74(b); TMEP §§609.01(a), 707.01, 803.05(b), 811.01. Only an application itself that is in condition for approval for publication on first action may be approved without applicant’s email address and attorney information of record. See TMEP §§609.01(a), 803.05(b), 1904.02(h). Even if a separately filed limitation would put an application in condition for publication, the application may not be approved for publication on first action because the USPTO is required to notify all grounds for refusing registration of the request for extension of protection to the IB. 15 U.S.C §1141h(c); Article 5. Otherwise, the International Register will indicate that the USPTO granted protection to the extension of protection in its original condition, without requiring amendments to the original listing of goods and/or services in the Section 66(a) application.

If the USPTO receives a limitation from the IB after an Office action has issued, the limitation cannot be considered a response to the Office action because it does not meet the requirements of 37 C.F.R §2.62. The examining attorney will take action on the limitation after the USPTO receives a timely response to the outstanding Office action. However, if the limitation puts the application in condition for publication, the examining attorney may enter the amendments via an examiner’s amendment after securing approval of the amendment from the proper person, if applicant’s email address and attorney information have already been provided. See 37 C.F.R §§2.32(a)(4), 2.62(b), 2.74(b); TMEP §§609.01(a), 707.01, 803.05(b), 811.01. Otherwise, the applicant must file a timely response to the Office action to avoid abandonment of the application. 37 C.F.R §2.65; TMEP §718.02.

Once the USPTO receives a timely response to the outstanding Office action, the examining attorney will review the response to the Office action and the limitation together. When the response to the Office action also contains amendments to the identification of goods and/or services, the examining attorney will review the amendments in the order of their effective dates to determine the scope of the resulting identification. The effective date of a limitation is the date of recordal in the International Register. See Regs. Rule 27(1). The effective date of a voluntary amendment or response to an Office action filed with the USPTO is its filing date. 37 C.F.R §2.195, TMEP §§303et seq. When the USPTO receives more than one limitation from the IB before the examining attorney takes action on a response to an Office action, the examining attorney must examine the limitations in the order of their effective dates. Acceptable amendments in earlier filings determine the scope of the identification when reviewing later amendments in either an Office action or limitation. TMEP §§1402.07(d)-(e).

If the response to the Office action and the limitation place the application in condition for publication, the examining attorney must approve the application for publication. If the response to a nonfinal Office action and the limitation leave any refusals or requirements unresolved and do not raise any new issues, the examining attorney must state in any subsequent Office action whether the limitation and response to the Office action resolve any requirements related to the identification and must maintain and continue, or make final, any refusals and/or requirements that remain unresolved, as appropriate. See TMEP §714.04. If the response to the Office action or limitation raises new issues, the new requirements must be made in a new nonfinal Office action. The new nonfinal Office action also must state whether the limitation and the response to the Office action resolve any requirements related to the identification and must maintain and continue any refusals and/or requirements that remain unresolved, as appropriate. The Office action should not be sent to the IB unless it raises new issues that should have been included in the first Office action. See TMEP §§714.03 and 714.05 for further discussion of when an examining attorney should issue a nonfinal Office action rather than a final Office action.

If the response to a final Office action and the limitation leave any requirements unresolved and do not raise any new issues, the examining attorney must follow the procedures outlined in TMEP §§715.03(a)(ii), (b), and 715.04(a), (b). An Office action issued in connection with those procedures must state whether the limitation and response to the Office action resolve any requirements related to the identification and should discuss any new evidence submitted with the request for reconsideration, regardless of whether it is significantly different from evidence previously submitted. If the response to a final Office action or the limitation raises new issues, the new refusals and/or requirements must be made in a new nonfinal Office action. The Office action should not be sent to the IB unless it raises new issues that should have been included in the first Office action. See TMEP §§715.03(a), (b), and 715.04–715.04(b) for further information as to how examining attorneys should handle requests for reconsideration.

When the examining attorney must require an amendment to the identification based on a limitation, the applicant may respond by further clarifying any indefinite limited goods and/or services within the scope of the operative identification, or by deleting impermissible limited goods and/or services as outside the scope of the operative identification, if appropriate. Once an identification has been expressly amended to delete goods and/or services, those items generally may not be reinserted. TMEP §1402.07(e).

The applicant may also submit arguments in favor of accepting the limited goods and/or services that have been refused. If the issue is maintained and made final, the applicant may file an appeal to the Trademark Trial and Appeal Board pursuant to 37 C.F.R. §2.141 and §2.142  or a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2)(iii).

Alternatively, the applicant may overcome the refusal of the limited goods and/or services by filing a new limitation with the IB listing goods and/or services that are within the scope of the operative identification for a fee. If the applicant chooses to file a new limitation, it must notify the examining attorney in a timely filed response to avoid abandonment of the §66(a) application. The response must indicate that another limitation has been filed with the IB, which the applicant believes will resolve the issue, request suspension, and include a copy of the limitation filed with the IB. See TMEP §716.02(g). The examining attorney will then suspend action awaiting receipt of the notification of the limitation. The copy of the limitation in the response to the Office action serves to authenticate the limitation so that the examining attorney can take action on it once received from the IB. If notification of the limitation is not received within six months of the issuance of the suspension, the examining attorney must inquire as to the status of the limitation. See TMEP §§716.02(g), 716.05.

The following examples of limitations filed separately from the §66(a) application illustrate the procedures discussed above:

Limitation Within §66(a) Application

When a holder includes a limitation of the goods and/or services within the international application or subsequent designation form and indicates that the limitation should apply to the extension of protection to the United States, the limitation appears within the §66(a) application, rather than as a separate filing. In this circumstance, the goods and/or services in the international registration are not extended to the United States for protection. Instead, only the limited goods and/or services are extended to the United States for protection. Accordingly, the limited goods and/or services, rather than the goods and/or services in the international registration, are treated as the original listing of goods and/or services in the §66(a) application. However, by law, the listing of goods and/or services in the international registration continues to set the scope of the goods and/or services that may be included in an extension of protection. 15 U.S.C. §1141e(a); Article 3(1); Regs. Rule 9(5)(d)(vi). Therefore, the goods and/or services in a limitation that appear within a §66(a) application are refused if they exceed the scope of the goods and/or services in the international registration as listed in the application.

If the examining attorney determines that some or all of the limitation is not acceptable because the requested change would result in a broadening or extension, rather than a narrowing, of the goods and/or services in the international registration (see TMEP §1402.06(a)–(b)), he or she must issue an Office action: (1) refusing to accept the listing of goods and/or services in the limitation, in whole or in part; (2) explaining the reasons for the finding; (3) stating the corresponding essential provisions of the law; and (4) indicating that the limited goods and/or services are not entitled to the benefits of extension of protection to the United States. See 15 U.S.C §1141h(b).

When the limitation included within a §66(a) application exceeds the scope of the goods and/or services in the international registration as listed in the application, the examining attorney does not advise the applicant that the goods and/or services in the international registration remain operative for purposes of future amendment because the full listing of goods and/or services in the international registration were never extended to the United States. Instead, the examining attorney will advise the applicant that it must amend the goods and/or services to conform to the scope established by the limited goods and/or services as well as the scope of the goods and/or services in the international registration.

The applicant may respond to such a refusal by amending the limited goods and/or services to goods and/or services within the scope of the identification in the international registration and the scope of the limitation, if appropriate. The applicant may not add goods and/or services listed in the international registration that were deleted by the limitation. Where a conforming amendment cannot be submitted, the applicant can respond by deleting the limited goods and/or services that have been refused. Once an application has been expressly amended to delete goods and/or services, those items generally may not be reinserted. TMEP §1402.07(e).

The applicant may also submit arguments in favor of accepting the goods and/or services that have been refused. If the refusal is maintained and made final, the applicant may file an appeal to the Trademark Trial and Appeal Board pursuant to 37 C.F.R. §2.141 and §2.142  or petition to the Director pursuant to 37 C.F.R. §2.63(b)(2)(iii).

Additionally, the applicant may overcome the refusal of the limited goods and/or services by filing a new limitation with the IB that lists goods and/or services that are within the scope of the goods and/or services in the international registration for a fee. If the applicant chooses to file a new limitation, it must notify the examining attorney in a timely filed response in order to avoid abandonment of the §66(a) application. The response must indicate that another limitation has been filed with the IB, which the applicant believes will resolve the issue, request suspension, and include a copy of the limitation filed with the IB. See TMEP §716.02(g). The examining attorney will then suspend action awaiting receipt of the notification of the limitation. The copy of the limitation in the response to the Office action authenticates the limitation so that the examining attorney can take action on it once received from the IB. If notification of the limitation is not received within six months of the issuance of the suspension, the examining attorney must inquire as to the status of the limitation. See TMEP §§716.02(g), 716.05.

In rare circumstances, a limitation that exceeds the scope of the entire listing of goods and/or services in the international registration could result in there being no goods and/or services in the §66(a) application that are entitled to extension of protection to the United States. For example, this may happen if a limitation within the §66(a) application lists only goods and/or services that exceed the scope of the goods and/or services in the international registration and that cannot be amended to stay within the scope of the limitation as well as the international registration. In such case, the examining attorney must consult with his or her managing or senior attorney, who will notify the Office of the Deputy Commissioner for Trademark Examination Policy.

The following are examples of limitations filed within the §66(a) application that illustrate the procedures discussed above:

See also TMEP §1906.01(e) for information about filing requests to record limitations with the IB and §1904.15 regarding restrictions to goods/services with respect to registered extensions of protection.

1904.03(g)(ii)    Partial Cancellation of an International Registration

When the USPTO receives notification from the IB that the international registration has been restricted in part due to a partial cancellation, the MPU will determine what, if any, goods/services remain extended to the United States and amend the listing of goods/services in the relevant pending extension of protection to reflect the changes in the notice of cancellation. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30.

1904.03(g)(iii)    Partial Ceasing of Effect of a Basic Mark

When the USPTO receives notification from the IB that the international registration has been restricted in part due to the partial ceasing of effect of the basic registration, the MPU will determine what, if any, goods/services remain extended to the United States and amend the listing of goods/services in the relevant pending extension of protection to reflect the changes in the notice of ceasing of effect. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30.

1904.04    Opposition

Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act.  The USPTO must notify the IB within 18 months of the date the IB sends the request for extension of protection to the USPTO of:  (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18 month period. 15 U.S.C. §1141h(c); Article 5; TMEP §1904.03(a).

The notice must state the dates on which the opposition period begins and ends, if known.  If the dates are unknown, the USPTO must communicate them to the IB "at the latest at the same time as any notification of a provisional refusal based on an opposition."  Regs. Rule 16(1)(b).

Any notification of refusal on the basis of opposition must be received by the IB within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier.  15 U.S.C. §11411h(c)(2); Article 5(2)(c)(ii).

An opposition to a §66(a) application must be filed through the Electronic System for Trademark Trials and Appeals (ESTTA) and may not be filed in paper form under any circumstances.  37 C.F.R. §2.101(b)(2);  In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005) .  Once filed, an opposition to a §66(a) application may not be amended to add to the grounds for opposition, to add to the goods or services opposed, or to add a joint opposer. 37 C.F.R. §2.107(b). The opposition is limited to those goods, services, grounds, and named opposers set forth in the ESTTA-generated opposition form cover sheet. 37 C.F.R. §§2.104(c), 2.107(b)  ("The grounds for opposition, the goods or services opposed, and the named opposers are limited to those identified in the ESTTA cover sheet regardless of what is contained in any attached statement."). CSC Holdings LLC v. SAS Optimhome, 99 USPQ2d 1959, 1962-63 (TTAB 2011); Hunt Control Sys., Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d 1558, 1561-62 (TTAB 2011) . The notice of opposition must also include all fees for each party opposer to oppose the registration in all classes specified in the opposition.  37 C.F.R. §2.101(d).  

Request for Extension of Time to Oppose.  A request for extension of time to oppose a §66(a) application must be filed through ESTTA and may not be filed in paper form under any circumstances. 37 C.F.R. §2.102(a)(1).

No more than three requests to extend the time for filing an opposition may be filed.  The time for filing an opposition may not be extended beyond 180 days from the date of publication.  37 C.F.R. §2.102(c).  

See TMEP §1503 for further information about oppositions.

1904.05    Certificate of Extension of Protection

If the mark in a §66(a) application is published for opposition and is not opposed, or survives all oppositions filed, the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Trademark Official Gazette.  15 U.S.C. §1141i(a).  From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register.  15 U.S.C. §1141i(b).  The certificate of registration will look the same as the certificate issued for registrations resulting from applications under §1 and §44 of the Trademark Act. See TMEP §1601.01(a).

Upon registration, the USPTO will refer to an extension of protection to the United States as a "registration," "registered extension of protection," or a "§66(a) registration."  37 C.F.R. §7.25(c).

A registered extension of protection always remains part of and dependent upon the international registration.  In this respect, a registered extension of protection differs from a §44 registration, which is independent from the underlying foreign registration, pursuant to 15 U.S.C. §1126(f).

See TMEP §1613 and §1904.10 regarding the requirement for an affidavit of use or excusable nonuse under §71 of the Trademark Act, 15 U.S.C. §1141k; §1905 regarding renewal and expiration of international registrations in general; and §1614 for information about renewal of registered extensions of protection.

1904.06    Assignment of Extension of Protection to the United States

Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is either:  (1) party to the Madrid Protocol, or (2) a member of an intergovernmental organization that is a party to the Madrid Protocol.

Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB.  A holder or assignee cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Recordation Branch of the USPTO.  The USPTO will record only those assignments (or other documents transferring title) that have been recorded with the IB.  The IB will notify the USPTO of any changes in ownership recorded in the International Register, and the USPTO will automatically update the Trademark database and the Assignment database to reflect the change(s).   See TMEP §501.07.

See TMEP §§1906.01-1906.01(i) regarding requests to record a change of ownership in the International Register.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to §66(a) applications or registered extensions of protection.  37 C.F.R. §7.22.

1904.07    Invalidation of Protection in United States

A registered extension of protection to the United States may be invalidated. See Regs. Rule 19. "Invalidation" means a decision by a competent administrative or judicial authority of the United States, revoking or cancelling the effects, in the territory of the United States, of an international registration with regard to all or some of the goods/services covered by a registered extension of protection to the United States. Regs. Rule 1(xixbis); see Article 5(6). In other words, a registration is invalidated when it is revoked or cancelled, in whole or in part, pursuant to a decision of the USPTO or by order of a federal court of the United States.

Generally, there are five reasons invalidation of a registered extension of protection to the United States may occur: (1) cancellation proceedings instituted by a third party before the Trademark Trial and Appeal Board; (2) order of a federal court of the United States; (3) failure to file an acceptable §71 affidavit or declaration; (4) holder’s voluntary surrender of the registered extension of protection; or (5) an expungement proceeding instituted by the Director upon petition or upon the Director’s initiative. See Regs. Rule 19. Each of these reasons is discussed below.

Invalidation may be in whole or in part, that is, it may be as to all or some of the goods/services covered by the registered extension of protection to the United States. See Regs. Rule 19(1)(v). In the case of partial invalidation, the USPTO will not cancel the registered extension of protection but, instead, delete the relevant goods/services from the USPTO’s electronic records for the registration. An updated registration certificate will generally not issue. But see TMEP §1716.04(e) (providing that an updated registration certificate will issue for any registration cancelled in part due to an expungement proceeding).

The holder has the same rights and remedies as the owner of a national registration issued on the Principal Register by the USPTO. 15 U.S.C. §1141i(b)(2); 37 C.F.R. §7.25. Accordingly, the cancellation procedures mentioned above that result in an invalidation of a registered extension of protection are governed by the substantive and procedural law of the United States, and are the same as for national marks registered by the USPTO. See Guide to International Registration, B.II.110.100.01–.02.

1904.07(a)    Invalidation Resulting From Cancellation Due to Third-Party Challenge

Invalidation may occur due to cancellation proceedings instituted by a third party before the TTAB, under §14 of the Trademark Act, because, for instance, the mark has become generic. See 15 U.S.C. §1064.  If the third party is successful and the TTAB issues an order granting the cancellation of the registered extension of protection, the USPTO will cancel the registration in due course. See TMEP §1607 and TBMP §§303, 307–309 regarding cancellation of registration.

Invalidation may also occur pursuant to an order of a federal court of the United States cancelling the registered extension of protection, under §37 of the Trademark Act. See 15 U.S.C. §1119.  Such order may result from, for example, infringement proceedings involving the holder and a third party, or the disposal of the holder’s assets. The USPTO will cancel the registration pursuant to the court order. See TMEP §1610 regarding a court order concerning a registration.

Regardless of whether by order of the TTAB or a federal court of the United States, after cancellation, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation.

1904.07(b)    Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration

Invalidation may occur due to the holder’s failure to timely file and meet the requirements of an affidavit or declaration under §71 of the Trademark Act, showing use of the registered mark in commerce in the United States. See 15 U.S.C. §1141k;  37 C.F.R. §§7.36–7.40; TMEP §§1613, 1613.04–1613.05, 1904.10. Failure to timely file the §71 affidavit or declaration is a statutory requirement, and the Director has no authority to waive the deadline for filing. See 15 U.S.C.  §1141k; TMEP §1613.04. The USPTO typically waits until about one month after the expiration of the grace period before automatically cancelling the registered extension of protection, in order to avoid inadvertent cancellation of a registration due to a delay in entering a timely filed §71 affidavit or declaration into the USPTO records.

If a timely filed §71 affidavit or declaration does not meet the requirements for filing and is found unacceptable, the USPTO will issue an Office action notifying the holder of the refusal and stating the reasons the affidavit or declaration is deficient. Failure to timely respond to the Office action or failure to timely correct the deficiencies stated in the Office action will result in cancellation of the registered extension of protection to the United States. 37 C.F.R. §7.39; TMEP §1613.15–1613.17(c).

Once the registration is cancelled, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation.

In a registered extension of protection for which an acceptable §71 affidavit or declaration was not filed, if the holder seeks to expedite cancellation, the holder may request in writing that the USPTO expedite the processing of the cancellation of the registered extension of protection. The request should be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a qualified U.S. attorney (see TMEP §602), and should specifically state that an acceptable §71 affidavit or declaration was not filed on or before the end of the grace period. Such a request should be directed to the Post Registration Section; if it is sent to the examining attorney, the examining attorney should forward it to the Supervisor of the Post Registration Section.

See TMEP §§1613–1613.19 for detailed information about §71 affidavits or declarations.

1904.07(c)    Invalidation Resulting From Voluntary Surrender of Registered Extension of Protection

Invalidation may occur when the holder of a registered extension of protection voluntarily surrenders the registration for cancellation under §7(e) of the Trademark Act. 15 U.S.C. §1057(e).  If the registered extension of protection is surrendered in its entirety, the registration will be cancelled in due course. If an acceptable §71 affidavit or declaration is filed for less than all the goods/services in the registered extension of protection, this is regarded as a surrender of the registration as to the good(s)/service(s) that are omitted. The relevant good(s)/service(s) will be deleted from the USPTO’s electronic records for the registration. An updated registration certificate will not issue.

After cancellation, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP § 1904.07(d) regarding the issuance of the notice of invalidation. See TMEP §1608 for information about surrender of registration for cancellation.

1904.07(d)    Invalidation Resulting from Expungement Proceedings

Invalidation may occur due to expungement proceedings instituted by the Director upon petition or upon the Director’s initiative, under Section 16A of the Trademark Act, because the mark has never been used in commerce on or in connection with some or all of the goods or services in the registration. See 15 U.S.C §1066a. If the Director issues an order cancelling the registered extension of protection, the USPTO will cancel the registration in due course. See TMEP §1716.04(e) regarding cancelling the registration.

After cancellation, the USPTO will notify the IB that the registered extension of protection to the United States has been invalidated. See TMEP §1904.07(e) regarding the issuance of the notice of invalidation.

1904.07(e)    Issuance of Notice of Invalidation to the International Bureau

Once the registered extension of protection has been cancelled by the USPTO, the Director shall issue to the IB a notice of invalidation of the registered extension of protection to the United States. See Article 5(6). The USPTO must notify the IB of the following information in the notice of invalidation: the administrative or judicial authority (i.e., the Director or federal court) that cancelled the registered extension of protection, the date on which the invalidation was pronounced and the effective date of the invalidation, and the fact that it is no longer subject to appeal; the number of the international registration and the name of the holder; and, if the invalidation does not concern all the goods/services, state those that are concerned (indicating either the goods/services that are no longer covered, or those that remain covered). Regs. Rule 19(1).

If the holder seeks to expedite the issuance of the notice of invalidation to the IB, the holder must file a petition to the Director for an International Application/Registration under 37 C.F.R. §2.146. See TMEP §1702. The submission must include a request that the USPTO expedite the processing of the notice of invalidation of the registered extension of protection. The request must be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a qualified U.S. attorney (see TMEP §602).

Upon receipt of the notice of invalidation from the USPTO, the IB will record the invalidation in the International Register, inform the holder, and inform the USPTO of the date on which the invalidation was recorded in the International Register. Regs. Rule 19(2).

After a registered extension of protection to the United States has been cancelled and inscribed in the International Register as invalidated, the holder may submit a subsequent designation seeking protection in the United States of the same mark for all or some of the goods/services in the international registration. The IB will not process a subsequent designation until the notice of invalidation has been recorded in the International Register. The holder may submit a subsequent designation prior to the recordal of the invalidation and request that it take effect immediately after the recording of the invalidation in the International Register. Regs. Rule 24(3)(c)(ii). Upon notification, the USPTO will examine the subsequent designation to determine if protection may be granted.

1904.08    Cancellation of International Registration by IB

If the IB notifies the USPTO that an international registration has been cancelled with respect to some or all of the goods/services, the USPTO will cancel the extension of protection of that international registration to the United States with respect to such goods/services as of the date on which the IB cancelled the international registration.  15 U.S.C. §1141j(a); 37 C.F.R. §7.30.

See TMEP §1905 regarding renewal of international registrations in general, and §1614 for information about renewal of registered extensions of protection to the United States.

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 email 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.

Generally, a request for transformation must be filed electronically using TEAS by clicking on "Madrid Protocol forms" at https://teas.uspto.gov. See 37 C.F.R. §§2.23(a), 7.25(a); TMEP §301.01. See TMEP §301.02 regarding limited exceptions for paper submissions, §305 regarding mailing permitted paper filings to the USPTO, and §307 regarding hand delivery of documents to the USPTO.

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

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.

When a cancelled extension of protection is transformed into a new application under §1 or §44, the examining attorney must conduct a new search to determine whether any later-filed applications for conflicting marks were approved for publication or registration and place the search strategy in the record. If a later-filed application has been approved, the examining attorney should inform the examining attorney who approved the later-filed application of the transformed application, so that appropriate action may be taken. If the later-filed application has been published, the examining attorney handling that application should request jurisdiction (see TMEP §1504.04(a)) and suspend the application pending disposition of the transformed application. If a later-filed application for a conflicting mark has matured into registration, the examining attorney must refuse registration of the transformed application under §2(d), even though the application for the registered mark was filed after the transformed application.

The examining attorney must also 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 §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.

1904.10    Affidavits of Use or Excusable Nonuse Required

Under §71 of the Trademark Act, 15 U.S.C. §1141k, a registered extension of protection to the United States will be cancelled if the holder of the international registration fails to periodically file affidavits of use in commerce or excusable nonuse.  37 C.F.R. §7.36(b). See TMEP §1613 for further information.

1904.11    Incontestability

Under §73 of the Trademark Act, 15 U.S.C. §1141m, if a holder files an affidavit that meets the requirements of §15 of the Trademark Act, a registered extension of protection to the United States may become "incontestable".  The period of continuous use on which an affidavit of incontestability may be based may begin no earlier than the date of issuance of the registered extension of protection, unless the holder owns a prior U.S. registration of the same mark for the same goods/services/collective membership organization.  15 U.S.C §1141m-n.   See TMEP §§1605–1605.06 regarding the requirements for an affidavit of incontestability under §15 of the Trademark Act.

1904.12    Replacement

If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States:  (1) are owned by the same person; (2) identify the same mark; and (3) list the same goods/services/collective membership organization, then the extension of protection shall have the same rights as those accrued to the U.S. national registration at the time the certificate of extension of protection issues.  15 U.S.C. §1141n; 37 C.F.R. §7.28(a); Article 4bis. If all of the goods/services/collective membership organization in the national registration are covered by the listing of goods/services/collective membership organization in the extension of protection, they are considered to be the same for the purposes of replacement.

Legally, replacement takes place automatically, by operation of law.  However, the USPTO will note the replacement in its records (and notify the IB accordingly) only if the holder of a registered or pending extension of protection files a request that it do so. If the request to note replacement is filed in reference to a pending request for extension of protection, the request will not be processed until the extension of protection registers.

A request to note replacement of a U.S. national registration with a registered extension of protection 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 registration number of the replaced U.S. registration; and
• (3)   The fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.28(b). The fee is non-refundable.

The holder can file a request to note replacement of more than one U.S. national registration based on a single registered or pending extension of protection provided that all of the goods/services listed in each U.S. national registration are covered by the listing of goods/services in the relevant extension of protection. The request to note replacement will be denied if the U.S. national registration includes goods/services not covered by the relevant extension of protection. Therefore, filers should ensure that any goods/services that exceed the scope of the relevant extension of protection are deleted from the U.S. national registration before filing the request to note replacement. See TMEP §1609.03 regarding amending the identification of goods/services in a registration.

If the original U.S. national registration is active on the date the registration based on the request for extension of protection issues, the USPTO will accept a request to note replacement that is not filed until after the U.S. national registration is cancelled or expired. However, if the original U.S. national registration is in the grace period for filing an affidavit of continued use under §8 or a combined affidavit of continued use and renewal under §§8 and 9, 15 U.S.C. §§1058,  1059, at the time the registered extension of protection issues, the USPTO will not note replacement unless the required affidavit is filed and accepted.

"Replacement" does not invalidate the U.S. national registration.  The U.S. national registration remains on the register, with all the rights attaching to such a registration, as long as the holder renews the registration under §9 of the Trademark Act and files the necessary affidavits of use or excusable nonuse under §8 of the Trademark Act.  37 C.F.R. §7.29.  It is up to the holder to decide whether to maintain the replaced U.S. national registration.

1904.13    Amendment and Correction of Registered Extension of Protection to the United States

All requests to record changes to an international registration and associated extensions of protection must be filed at the International Bureau (IB).  Accordingly, the holder of a registered extension of protection of an international registration to the United States may file a request for amendment or correction under §7 of the Trademark Act with the USPTO only in limited circumstances, where the change will affect only the extension of protection to the United States.  See TMEP §1609.01(a), §1609.02, §1904.13(a), and §1904.13(b) for further information. 

1904.13(a)    Limited Amendments to Registered Extension of Protection

The holder of a registered extension of protection may request certain changes under §7 of the Trademark Act, 15 U.S.C. §1057, that will affect only the extension of protection in the United States.  For example, an applicant may request to amend the registered extension of protection to add a voluntary disclaimer, to amend the translation of the mark as provided during examination, or to limit or partially delete goods, services, or classes. TMEP §1609.01(a).  If the USPTO grants the §7 request, the USPTO will notify the IB of the change to the extension of protection to the United States.

The USPTO will not accept an amendment of a registered extension of protection involving the holder’s name or address that has not been recorded with the IB.  37 C.F.R. §7.22; TMEP §1906.01(c).

The mark in a registered extension of protection cannot be amended.   See TMEP §§1609.02, 1906.01(i).

See also TMEP §§1906.01-1906.01(i) regarding requests to record changes at the IB.

1904.13(b)      Corrections to Registered Extensions of Protection

Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even after registration in the United States.  However, in the limited circumstance where the holder of an international registration makes a mistake in a document filed during prosecution in the USPTO that affects only the extension of protection to the United States, the registrant may request correction of the error pursuant to 37 C.F.R. §2.175.  For example, if there was a minor typographical error in an amendment to the identification of goods in a §66(a) application, and the mark registered with such an error, the owner of the registration could request correction.  If the USPTO grants the request, the USPTO will notify the IB of the change to the extension of protection to the United States.

If a clerical error occurred through the fault of the USPTO, which is apparent from a review of USPTO records, the USPTO will correct the error without charge.  See TMEP §1609.10(a) for procedures for requesting correction of a USPTO error and §1609.10(b) regarding correction of a registrant’s error.

1904.14    Notification of Correction in the International Register with Respect to Registered Extension of Protection  

When the IB determines that there is an error concerning an international registration in the International Register, it corrects that error ex officio.  The IB will also correct errors at the request of the holder or the Office of Origin.  Regs. Rule 28(1); see TMEP §1906.01(f).  If the IB notifies the USPTO of a correction of an international registration, the USPTO may declare in a notification to the IB that protection cannot, or can no longer, be granted to the international registration as corrected.  This may be done where there are grounds for refusal of the international registration as corrected which did not apply to the international registration as originally notified to the USPTO.  Regs. Rule 28(3).

Upon receipt of a notification of correction in a registered extension of protection, the MPU shall determine whether the correction would require republication of the mark.  If republication would not be required, the MPU will enter the correction in the Trademark database and ensure that a certificate of correction is issued to the holder.

When a notification of correction received from the IB prior to registration is not acted upon in sufficient time or is received too late to withdraw the application from issuance of a registration, the resulting registration generally will be treated as inadvertently issued.  However, to the extent possible given the nature of the correction, the holder will be given the opportunity to keep the registration as issued and the USPTO will create a child application for any corrected goods/services/classes.  The USPTO will notify the holder via the last correspondence address of record as to the receipt of the correction and the options for processing.  To the extent a correction involves issues that cannot be handled by the creation of a child application, such as a material alteration of the mark, the registration will be cancelled as inadvertently issued and examined in accordance with USPTO policy and procedures.

When a notification of correction is received after the USPTO has issued a registered extension of protection, the correction will be reviewed in the MPU to determine if the registration may be corrected, as no republication would be required to implement the correction.  When the correction would not trigger a requirement for republication, the MPU will make the correction and schedule the issuance of an updated registration certificate, as necessary.

If the MPU determines that entry of the correction would require further examination, the holder will be given the opportunity to keep the registration as issued and to divide any corrected goods, services, and/or classes affected into a child application pursuant to 37 C.F.R. §2.87.  See TMEP §§1110–1110.12.  The holder may also request the entire file be restored to pendency and the application will be re-examined as corrected.

Upon receipt of a correction that would affect the rights deriving from the international registration, the USPTO is afforded a new period of 18 months within which to notify the IB of any newly arising grounds for refusal.  To the extent any requirements or refusals are applicable to the corrected data, the examining attorney shall issue an Office action, which will be forwarded by the MPU to the IB, as required by Section 68(c)(1), 15 U.S.C. §1141h(c)(1), and Rule 28(3) of the Regulations.  The examining attorney must contact the MPU upon issuance of such an action so that it will be forwarded as required.

See also TMEP §1904.03(f) regarding corrections to pending §66(a) applications, and §1906.01(f) for information about filing a request for correction with the IB.

1904.15    Notification of Restrictions to Goods/Services with Respect to a Registered Extension of Protection

1904.15(a)    Limitations to Goods/Services

The MPU reviews all limitations and enters any amendments to the listing of goods and services into the Trademark electronic record, as appropriate. If a limitation requires changes to the record, MPU ensures that an updated registration certificate is issued to the holder.

If a limitation results in the deletion of all goods/services identified in the §66(a) registration, the registration will be cancelled.

See also TMEP §1904.02(f)(i) regarding limitations in general, §1904.03(g)(i) regarding limitations of the goods/services in pending requests for extension of protection (§66(a) applications), and §1906.01(e) for information about filing a request to record a limitation with the IB.

1904.15(b)    Partial Cancellation of an International Registration

When the USPTO receives notification from the IB that the international registration has been restricted in part due to a partial cancellation, the MPU will determine what, if any, goods/services remain extended to the United States and delete the canceled goods/services from the U.S. registration. The USPTO will then issue an updated registration certificate.  15 U.S.C. §1141j(a);  37 C.F.R. §7.30.

See also TMEP §1904.02(f)(iii) regarding partial cancellations in general, §1904.03(g)(ii) regarding partial cancellation of the goods/services in pending requests for extension of protection (§66(a) applications), and §1906.01(e) for information about filing a request to record a cancellation with the IB.

1904.15(c)    Partial Ceasing of Effect of an International Registration

When the USPTO receives notification from the IB that the international registration has been restricted in part due to a partial ceasing of effect of the basic registration, the MPU will determine what, if any, goods/services remain extended to the United States and delete the canceled goods/services from the U.S. registration. The USPTO will then issue an updated registration certificate.  15 U.S.C. §1141j(a);  37 C.F.R. §7.30. See also TMEP §1904.02(f)(iv) regarding partial ceasings of effect in general and §1904.03(g)(iii) regarding partial ceasings of effect in pending requests for extension of protection (§66(a) applications).