1902.07   Irregularities in International Application  

If an international application is unacceptable, the IB will notify both the applicant and the USPTO of the "irregularity."  Some types of irregularities must be remedied by the USPTO, some must be remedied by the applicant, and some may be remedied by either the applicant or the USPTO.  See 37 C.F.R. §7.14 and Common Reg. 11.

The MPU trademark specialists review all incoming notices of irregularities.  If the irregularity is one that must be remedied by the USPTO (see TMEP §1902.07(a)), the trademark specialist will respond to the notice and send the applicant a copy of the response.  

If the irregularity is not one that must be remedied by the USPTO, the USPTO will note receipt of the notice of irregularity in its automated records, but will not take any other action.  The USPTO will not respond to the notice on behalf of the applicant.  The USPTO will not send a copy of the notice to the applicant, because the IB has already notified the applicant of the irregularity.  A copy of the notice will be placed in the electronic record of the international application.  The notice can be reviewed using the Trademark Status and Document Retrieval ("TSDR") system on the USPTO website, by entering the control number assigned to the international application by the USPTO.

Applicants must file responses to irregularities in classification and identification of goods/services through the USPTO (see TMEP §§1902.07(c) et seq.).  Fees for correcting irregularities in international applications must be paid directly to the IB in Swiss currency (see TMEP §1902.07(b)(i)).  Responses to all other types of irregularities may be filed either directly at the IB or through the USPTO.

To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IB’s notice.  Receipt of the response in the USPTO does not satisfy this requirement.

For responses to IB notices of irregularities that may be submitted through the USPTO, applicants may file the response either through TEAS or on paper.  When correcting irregularities through the USPTO, the applicant should submit the response as soon as possible, and at least one month before the end of the response deadline set forth in the IB’s notice.  The USPTO will not process any response filed after the IB response deadline.  37 C.F.R. §7.14(e).  See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.

1902.07(a)   Irregularities that Must Be Remedied by the USPTO  

The following irregularities must be remedied by the USPTO within three months of the date of notification of the irregularity:

  • Application is not presented on the official form or is not typed;
  • Omission of reproduction of mark;
  • Omission of list of goods/services;
  • Omission of designation of Contracting Party or Parties;
  • Insufficient identification of applicant;
  • Irregularities relating to the entitlement of the applicant to file an international application (see TMEP §1902.02(j));
  • Application not signed by USPTO (Note:  Signature may be replaced with seal or other mode of identification determined by the IB.  See Admin. Instr. §7);
  • Certification by USPTO is defective;
  • Omission of date and number of basic application or registration.

Common Regs. 11(4) and 15(1); Guide to International Registration, Para. B.II.09.19.

If the USPTO does not cure the irregularity within three months, the international application is abandoned.  Common Regs. 11(4)(b) and 11(5).

When responding to a notice of an irregularity that must be remedied by the USPTO, the MPU trademark specialist will send the applicant a copy of the response.

1902.07(b)   Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB

1902.07(b)(i)   Fee Irregularities

Where international fees for the international application are insufficient, the IB will notify both the applicant and the USPTO of the deficiency.  The USPTO will not respond to the notice on behalf of applicant even if the international application fees were paid through TEAS.

Fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency, even if the applicant is filing a response to correct other irregularities through the USPTO.  37 C.F.R. §7.14(c).  If any fees for correcting irregularities are submitted to the USPTO, the USPTO will return the fees to the applicant.  The USPTO will not forward the fees to the IB.  If the fees are not received by the IB on or before the deadline set forth in the IB’s notice of irregularity, the international application may be abandoned.  See TMEP §1903.02 for information about the payment of fees to the IB.

1902.07(c)   Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO

1902.07(c)(i)   Classification of Goods/Services

If the IB finds an irregularity in classification, it will make a proposal and send it to both the applicant and the USPTO.  The notice will state whether any additional fees are due.  Common Reg. 12(1).  The USPTO will neither respond to the notice on behalf of applicant nor advise the applicant as to how to reclassify the goods/services.

If an irregularity notice indicates that the failure to resolve the irregularity will result in the abandonment of the international application, the applicant must respond and/or pay the necessary fees to avoid abandonment.  If the irregularity notice merely indicates that "if no response, WIPO proceeds," the applicant need not respond if applicant agrees to the proposal by WIPO.

The applicant cannot send its response directly to the IB.  The applicant must submit the response through the USPTO.  The IB must receive the response within 3 months of the date of the IB notification.  37 C.F.R. §7.14(b); Common Reg. 12(2).  See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.

An MPU trademark specialist will review the applicant’s response, but only to ensure that the response consists solely of an amendment to classification and that no amendments to the identification of the goods or services have been proposed.  So long as the only proposed change is to classification, and such change in classification does not expand the listing of goods/services to exceed the scope of the underlying basic application or registration, the USPTO will forward it to the IB and notify the applicant accordingly.  See TMEP §1902.07(c)(ii) regarding proposed amendments to the identification of goods/services.

If additional fees are due as a result of reclassification of goods/services, the applicant must pay the fees directly to the IB in Swiss currency.  See TMEP §1903.02 for further information about the payment of fees to the IB.

Under Article 3(2), the IB controls classification and has the final say on classification of goods/services.  The IB may modify, withdraw, or maintain its proposal after reviewing the applicant’s response.  Common Reg. 12.  

See also TMEP §1401.03(d).

1902.07(c)(ii)   Identification (Indication) of Goods/Services

If the IB determines that the identification of goods/services, referred to as the "indication of goods/services" by the IB, is too vague or is incomprehensible or linguistically incorrect, it will notify both the applicant and the USPTO.  Common Reg. 13.  The IB may include a suggested amendment in the notification.  The USPTO will not respond to the notice on behalf of applicant or advise the applicant as to how to identify the goods/services.

The applicant cannot send a response directly to the IB.  Any response regarding the identification of goods/services must be sent through the USPTO.  The IB must receive the response within 3 months of the date of the IB notification.  37 C.F.R. §§7.14(a) and 7.14(b); Common Reg. 13(2).  See TMEP §1902.07(f) regarding responses to notices of irregularity submitted through the USPTO.

The applicant’s response to the IB’s notice should separately address each irregularity pertaining to the identification of goods/services, specifying which goods/services are to be deleted or amended, and providing any explanation or arguments deemed necessary. To avoid any misunderstanding by the examiners at the IB, the response should also include a separate final listing of the goods/services as it will appear in the international registration. If the applicant omits any goods/services from the final listing that were previously included in the identification of goods/services, the IB may remove such goods/services from the international registration.

An MPU trademark specialist will review the applicant’s response to ensure that the goods/services identified in the response are within the scope of the identification in the basic application and/or registration at the time the response is filed.  If an amendment to the goods/services in the basic application and/or registration has been entered into the Trademark database since the date the international application was submitted to the USPTO, the goods/services in the response to the IB notice must be within the scope of the amended goods/services.  If the goods/services in the response exceed the scope of the goods/services in the basic application and/or registration as amended, the trademark specialist will notify the applicant that the proposed amendment to the goods/services does not conform to the goods/services as identified in the basic application and/or registration and that the response will not be forwarded to the IB.  If there is time remaining in the IB response period, the applicant may submit a corrected response.  If the goods/services in the corrected response do not exceed the scope of the goods/services in the basic application or registration as amended, and the IB response period has not expired, the MPU will forward the response to the IB.

If no proposal acceptable to the IB for remedying the irregularity is made within 3 months, and all other requirements have been met, the IB will either:  (1) include the term in the international registration with an indication that the IB considers the term to be unacceptable, provided that the class of the vague term was specified in the application; or (2) if the class was not specified, delete the term and notify both the USPTO and the applicant accordingly.  Common Reg. 13(2)(b).

1902.07(d)   Other Irregularities that Must Be Remedied by Applicant – Applicant May Respond Directly to the IB or Through the USPTO

Other irregularities to be remedied by applicant include, but are not limited to, insufficient information about the applicant’s representative; missing transliteration; insufficient information about a priority claim; unclear reproduction of the mark; and color claim with no color reproduction.  The applicant must remedy any irregularities within three months of the date of the notification, or the international application may be abandoned.  Common Reg. 11(2)(b).  See Guide to International Registration, Para. B.II.09.23, for further information.

An applicant may file the response to these irregularities either directly with the IB, or through the USPTO, either electronically or on paper.  To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IB’s notice.  Receipt in the USPTO does not fulfill this requirement.

If the response is filed through the USPTO, the USPTO will not review the response to the irregularity but will forward the response to the IB, and notify the applicant accordingly.  See TMEP §1902.07(f) for information about responding to a notice of irregularity through the USPTO.

1902.07(e)   Filing Response Directly With the IB

Information about filing responses directly with the IB is available on the WIPO website, currently at http://www.wipo.int/madrid/en/.  An applicant may contact the IB by mail to 34 chemin des Colombettes, P.O. Box 18, 1211 Geneva 20, Switzerland; by telephone at 41 22 338 9111; by fax to 41 22 740 1429; or by e-mail to intreg.mail@wipo.int.

1902.07(f)   Responding to Notice of Irregularity Through the USPTO

Under Trademark Rule 7.14(e), 37 C.F.R. §7.14(e), an applicant may file a response to an IB notice of irregularity through the USPTO for forwarding to the IB before the IB’s response deadline.  The response may be filed electronically or on paper.  However, receipt in the USPTO does not fulfill the requirement that the response be received by the IB before the IB response deadline.  Therefore, applicants should submit responses to the USPTO as soon as possible, and at least one month before the end of the IB response period.  The USPTO will not process any response received after the IB response deadline.

The IB does not have a form for responses to irregularity notices.  Applicants are strongly encouraged to use the TEAS form for responses to notices of irregularity.  Applicants submitting paper responses to the USPTO for forwarding to the IB should include with the response:  (1) the USPTO control number (U.S. Reference No.) assigned to the international application; and (2) a copy of the IB’s irregularity notice.  The applicant may include a self-addressed, stamped postcard with the response.  Upon receipt, the USPTO will place a label indicating the receipt date on the documents, and return the postcard to the applicant.  However, to be considered timely, the response must be received by the IB before the end of the response period set forth in the IB’s notice, and receipt in the USPTO does not fulfill the IB deadline requirement.

Applicants submitting responses on paper should mail the document to the following address, using the First Class Service of the USPS:

Madrid Processing Unit

600 Dulany Street

Alexandria

Virginia

22314-5793

37 C.F.R. §§2.190(e) and 7.4(b).  Alternatively, the response may be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention:  MPU.  TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.  37 C.F.R. §7.4(c).  The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 and Express Mail provisions of 37 C.F.R. §2.198 do not apply to responses to notices of irregularity.  37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2), and 7.4(e).

Please note that fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency, even if the applicant is filing a response to correct irregularities through the USPTO.  37 C.F.R. §7.14(c).  See TMEP §1903.02 for further information about the payment of fees to the IB.

Responses to notices of irregularity cannot be filed by fax.  37 C.F.R. §§2.195(d)(5) and 7.4(d)(3).

The USPTO will not process any response filed after the IB response deadline.  37 C.F.R. §7.14(e).