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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) Section 66(a) Basis

Section 66(a) of the Trademark Act provides a basis for filing in the United States. 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).

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 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, TMEP §§1303.01(a)(v) and 1303.01(b)(ii) for information about declarations in §66(a) applications for collective trademarks and collective service marks, TMEP §§1304.02(a)(v) and 1304.02(b)(ii) for declarations in §66(a) applications for collective membership marks, and TMEP §§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 affidavits 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 these affidavits.

1904.01(e) Priority

A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention 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 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).

Section 67 of the Trademark Act, 15 U.S.C. §1141g; Article 4(2); see also Paris Convention Article 4(D).

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 Common Regs. 34 through 38 regarding international fees, and TMEP §1110.11 regarding dividing a §66(a) application.

1904.01(g) Constructive Use

Under §66(b) of the Trademark Act, 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) of the Trademark Act, 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 of the Trademark Act.

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 3 bis. 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.

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

1904.02(a) Examined as Regular Application

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). 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. §§2.21-2.23, 2.76, 2.88, 2.89, 2.130-2.131, 2.160-2.166, 2.168, 2.173, 2.175, 2.181-§2.186, and 2.197, 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 Common 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, bowls, trays, 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 Common 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 Common 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 3 ter(2); Guide to International Registration, B.II.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, TMEP §1304.02(d) regarding classification in §66(a) collective membership applications, TMEP §1306.02(c) regarding identifications in certification mark applications, and TMEP §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 the examining attorney determines that the class would be proper were the goods/services amended with further clarifying language, 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.

Examples:

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 "nutritional supplements as included in this class," but the IB has assigned Class 29. Even with the wording added to "nutritional supplements," the identification of goods remains definite, but the class is not consistent with the USPTO Identification and Classification of Goods and Services Manual. The examining attorney will accept the goods in the assigned class, and notify the Administrator of the serial number.

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)).

Examples:

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 "helmets" in Class 9 or "headgear for orthodontic appliances" 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 unit 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 "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.

Examples:

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.

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 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 TMEP §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.

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). United States 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 (Class A), certification marks for services (Class B), and collective membership marks (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), 1303.01(b)(ii), 1304.02(a)(v), 1304.02(b)(ii), 1306.02(a)(v), 1306.02(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, TMEP §§1304–1304.03(c) regarding the requirements for collective membership mark applications, and TMEP §§1306–1306.06(c) regarding the requirements for certification mark applications.

1904.02(e) Corrections and Limitations to the International Registration

1904.02(e)(i) Corrections

When the IB determines that there is an error concerning 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 U.S.), 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 will remain as amended, that is, the amended wording 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 that amended language. See TMEP §1402.07(e).

1904.02(e)(ii) Limitations

The holder of an international registration may record a limitation of the good/services, which may affect some or all of the designated Contracting Parties. Article 9 bis(iii). Upon recordation, the IB will notify the USPTO if the U.S. is affected by the limitation. The recording of 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 countries affected.

A limitation may set forth particular goods/services narrower in scope than the goods/services as identified in the international registration. For example, if the international registration covers "clothing," the holder may limit the goods to "sweaters and pants" with respect to the U.S. Upon notification by the IB, if the examining attorney considers that the change requested is not in fact a limitation but an expansion of the list of goods/services, or is otherwise unacceptable, then the USPTO may declare that the limitation has no effect in the United States. Common Regs. 27(5)(a)-(c). For example, if the goods are identified as "clothing" in the international registration, and the limitation specifies "sweaters and hair bows," the examining attorney must refuse to apply the "hair bows" portion of the limitation to the request for extension of protection to the United States because it expands, rather than limits, the scope of the goods of the international registration.

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

1904.02(e)(iii) Limitations vs. Amendments

To the extent that an amendment of the identification in a §66(a) application narrows or restricts the goods/services, an amendment is comparable to a limitation affecting only the United States. A limitation filed at the IB by the applicant clarifying the nature of the goods/services may render the identification of goods/services in the §66(a) application sufficiently definite. Nevertheless, if the examining attorney has issued an Office action requiring amendment of the identification of goods/services, a proper response to the Office action must be received in the allowed time period. Simply recording a limitation with the IB is not a response to an Office action. The applicant must file a response with the USPTO within six months of the date on which the USPTO issued the Office action, stating that the applicant has recorded a limitation that will resolve the outstanding issue(s). See 37 C.F.R §§2.62, 2.65(a).

1904.02(f) Mark Must Be Registrable on Principal Register

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).

1904.02(g) Refusal Must Be Made Within 18 Months

Under §68(c) of the Trademark Act and Article 5 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. If the provisional refusal meets the applicable requirements ( see TMEP §§1904.03 et seq.), the IB will process the refusal and send it to the holder (i.e., the §66(a) applicant). 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 Office action must be sent to the USPTO, not the IB, and is due in the USPTO within six months of the date on which the USPTO sent the action to the IB, notthe date on which the refusal was processed by the IB. 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP § 1904.03(c). Failure to respond to the Office action within the time provided will result in abandonment of the application. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). See TMEP § 711 regarding the deadline for response to an Office action and TMEP §§ 718.02 and 718.03-718.03(a) regarding abandonment for failure to respond or incomplete response to an Office action.

A priority action or suspension notice may be issued as a first Office action in a §66(a) application. An examiner’s amendment or a combined examiner’s amendment/priority action ( see TMEP §§707 et seq., 708.05) may not be issued as a first Office action because the IB will not accept such amendments. However, under certain circumstances, a no-call examiner’s amendment may be issued in a first Office action to remove certain parenthetical wording from an identification of goods/services if the application is otherwise in condition for approval for publication. See TMEP §1904.02(c) regarding opinion language of the International Bureau. In addition, examiner’s amendments and combined examiner’s amendments/priority actions may be issued as second and subsequent actions if authorized by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner authorized to practice before the USPTO pursuant to 37 C.F.R. §11.14 ("qualified practitioner"). See TMEP §§602 et seq. regarding persons who are authorized to represent applicants, registrants, and parties to proceedings before the USPTO.

The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO. See TMEP §§609.01(a) and 1904.02(i) regarding 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.

The USPTO will send second and subsequent Office actions, and other notices, directly to the §66(a) applicant’s correspondence address of record.

In a §66(a) application or a registered extension of protection, the USPTO will accept a notice of change of the correspondence address, signed by the applicant or registrant, someone with legal authority to bind the applicant/registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner, and will send correspondence to the new address. See 37 C.F.R. §§2.18(b)(2), 2.193(e)(9) and TMEP §§609 et seq. regarding the procedures for establishing and changing the correspondence address in the USPTO.

A change of the correspondence address in the USPTO records will not affect the address of the holder’s representative designated in the international registration, to which the IB sends correspondence. A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. See TMEP §1906.01(d). There are forms for changing the name or address of the representative on the IB website at http://www.wipo.int/madrid/en/. See also Common Reg. 36(i).

See TMEP §§602.03 et seq. regarding foreign attorneys and agents, TMEP §609.01(a) regarding correspondence in §66(a) applications, and TMEP §609.04 regarding correspondence with parties not domiciled in the United States.

1904.02(j) Mark May Not Be Amended

The Madrid Protocol and the Common 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, Para. B.II.72.02, 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 United States 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 United States 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 Chapter 1700 regarding petitions, and TMEP §807.10 regarding drawings of three-dimensional marks.

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 black-and-white reproduction of the same mark depicted in the international registration. See TMEP §807.07(b). 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), 807.07(c).

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 United States requirements for a detailed description of the mark. See TMEP §807.09.

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.

Section 68(c) of the Trademark Act, 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. Section 68(c)(4) of the Trademark Act; Article 5(5); Common Reg. 17(2)(iv). 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. Section 68(c)(3) of the Trademark Act.

If upon re-examination the examining attorney determines a new ground of refusal exists, 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 contact the MPU upon issuance of the Office action, so that a notification of the new ground of refusal can be 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 Common Reg. 17, 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.

Common Reg. 17(2).

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

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

A holder of an international registration who applies for an extension of protection to the United States will receive an initial notification of refusal through the IB. The holder must respond directly to the USPTO. The holder may be represented by an attorney, but only if such attorney meets the requirements of 37 C.F.R. §11.14 ( see TMEP §§602 et seq.). Standard examination procedures are used to examine §66(a) applications. 15 U.S.C. §1141h.

A foreign attorney who does not meet the requirements of 37 C.F.R. §11.14 cannot represent the applicant before the USPTO or sign a response to an Office action on behalf of the applicant. 37 C.F.R. §11.5(b)(2); see TMEP §§ 602.03 et seq., 611.02, 712.01, 712.03.

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) and 2.65(a)(i) provide 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.

Common Reg. 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. Common Reg. 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. Common Reg. 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 notify the MPU that a new Office action has been issued, and the MPU will ensure that the IB is notified of the new grounds for refusal. 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 TMEP §1906.01(f) for information about filing requests for correction with the IB.

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

Limitation Due to Partial Cancellation of International Registration

When the USPTO receives notification from the IB that the international registration has been cancelled in part due to the ceasing of effect of the basic registration, the USPTO will partially cancel the pending request for extension of protection by limiting or removing the cancelled goods and/or services from the USPTO’s Trademark database. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30. The MPU trademark specialist will determine what, if any, goods and/or services remain extended to the United States and narrow the listing of goods and/or services accordingly.

Voluntary Limitation by Holder of International Registration

Upon receipt of notification from the IB that a voluntary limitation of the list of goods/services may affect an extension of protection to the United States, the USPTO may declare that the limitation has no effect. Such a declaration must be sent to the IB within 18 months of notification of the limitation. The USPTO will indicate the reasons why the limitation has no effect, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal. Common Regs. 27(5)(a)-(c).

If the MPU determines that a limitation does have effect in the U.S., the limitation shall be entered into the Trademark database with respect to the goods/services as identified at the time of receipt of the notification of limitation.

If the MPU determines that review by the examining attorney is required, the MPU will notify the examining attorney, and the examining attorney will determine whether the limited goods/services are within the scope of the identification of goods/services as originally identified in the §66(a) application. For example, if the request for extension of protection originally lists goods as "clothing" in International Class 25, and the applicant submits a response to an Office action proposing to amend such goods to "clothing, namely pants, shirts, and dresses," and the USPTO later receives a voluntary limitation that lists the goods as "clothing for women," the consideration of scope is against the original identification of "clothing." If it is determined that the limitation is not an expansion of the scope of the original listing, the limited goods/services will then be considered in light of any interim amendments proposed by the applicant during prosecution of the application. In the example above, the proposed wording "clothing, namely, pants, shirts, and dresses" will be further limited to "clothing for women, namely, pants, shirts, and dresses."

If the examining attorney determines that the limitation is not acceptable (e.g., because he or she determines that the change requested results in an extension rather than a limitation of the goods/services), he or she must issue an Office action refusing the limitation and indicating the reasons why the limitation is unacceptable. If the listing of goods/services is not an expansion of the original goods/services but is itself indefinite by USPTO standards (e.g., "clothing for women"), the examining attorney must issue a new requirement for a sufficiently definite identification and may supersede any previously issued requirement to the extent it remains outstanding at the time of examination of the limitation. If the examining attorney issues a new Office action relating to the limitation of goods/services, he/she must also notify the MPU, and the MPU will ensure that the IB is notified when a limitation is found to have no effect in the United States. The applicant may argue against the refusal of the limitation, and, if such refusal is made final, file an appeal to the Trademark Trial and Appeal Board or petition to the Director pursuant to 37 C.F.R. §2.63(b)(2).

If an Office action requiring only that the identification be amended is outstanding, it is possible that a limitation notice processed before the end of the response period would resolve the issue. If the examining attorney determines that the identification proposed in the limitation is acceptable and puts the application in condition for approval for publication, the examining attorney may issue a no-call examiner’s amendment that acknowledges receipt of the limitation and states that the requirement for a more definite identification is satisfied and may then approve the application for publication.

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

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

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. As noted above, 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.

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." Common Reg. 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"). 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 change or add to the grounds for opposition, or to add to the goods or services opposed. 37 C.F.R. §2.107(b). The scope of the opposition is limited to those grounds designated, and those goods/services identified, on the ESTTA-generated opposition form. 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)(2).

Request for Extension of Time to Oppose. A request for extension of time to oppose a §66(a) application must be filed through ESTTA. 37 C.F.R. §2.102(a)(2).

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 et seq. 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 Official Gazette. Section 69(a) of the Trademark Act, 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; TMEP §1905 regarding renewal and expiration of international registrations in general; and TMEP §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. §1141 l, 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 et seq. 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 Common Reg. 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. Common Reg. 1(xix bis); 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 four 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 ("TTAB"); (2) order of a federal court of the United States; (3) failure to file an acceptable §71 affidavit or declaration; or (4) holder’s voluntary surrender of the registered extension of protection. 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 Common Reg. 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 not issue.

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.91.01–.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–.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 practitioner, 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) 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). Common Reg. 19(1).

If the holder seeks to expedite the issuance of the notice of invalidation to the IB, the holder may request in writing that the USPTO expedite the processing of the notice of invalidation 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 practitioner. Such a request should be directed to the Madrid Processing Unit via e-mail at MPU@uspto.gov.

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. Common Reg. 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. Common Reg. 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 TMEP §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 9 quinquies.

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 9 quinquies. See TMEP §1904.09(a) for the requirements for transformation.

1904.09(a) Requirements for Transformation

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

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

37 C.F.R. §7.31(a).

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

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

The USPTO prefers that a request for transformation be filed electronically. In TEAS, the transformation request form can be accessed by clicking on the link entitled "Madrid protocol forms" at http://www.uspto.gov.

Alternatively, the request may be mailed using the First Class Service of the USPS to the following address:

Madrid Processing Unit

600 Dulany Street

Alexandria

Virginia

22314-5793

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

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

1904.09(b) Examination of Transformed Application

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

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

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 TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.

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

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

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

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 et seq. 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 are: (1) 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 4 bis.

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 extension of protection files a request that it do so. 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 holder cannot file the request to note replacement of the U.S. national registration until the registration based on the request for extension of protection issues. 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 Section 8 or a combined affidavit of continued use and renewal under Sections 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 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 et seq. 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. Common Reg. 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. Common Reg. 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 Office 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(e) of the Common 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 TMEP §1906.01(f) for information about filing a request for correction with the IB.

1904.15 Notification of Limitation of the List of Goods/Services with Respect to Registered Extension of Protection

Limitation Due to Partial Cancellation of International Registration

When the USPTO receives notification from the IB that the international registration has been cancelled in part due to the ceasing of effect of the basic registration, the USPTO will partially cancel the registered extension of protection by updating the USPTO’s Trademark database and issuing an updated registration certificate. 15 U.S.C. §1141j(a); 37 C.F.R. §7.30 The MPU will determine what, if any, goods and/or services remain extended to the United States and narrow the listing of goods and/or services accordingly.

Voluntary Limitation by Holder of International Registration

Upon receipt of notification from the IB that a voluntary limitation of the list of goods/services affects the United States, the USPTO may declare that the limitation has no effect. Such a declaration must be sent to the IB within 18 months of notification of the limitation. The USPTO will indicate the reasons for which the limitation has no effect, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal. Common Regs. 27(5)(a)-(c).

If the MPU trademark specialist determines that the limitation has no effect in the United States (e.g., because he or she determines that the change requested results in an extension rather than a limitation of the goods/services), the MPU will forward the case to the Post Registration division to issue a post-registration Office action refusing the limitation as an unacceptable amendment of the registered extension of protection under Section 7. 15 U.S.C. §1057. See TMEP §1609.03 regarding amendment of the identification of goods or services in a registered extension of protection. Once issued, the MPU will forward a copy of the Office action declaring the limitation to have no effect to the IB within 18 months of the date of the IB’s notification of the limitation.

If the MPU trademark specialist determines that the limitation does have effect in the United States, the MPU trademark specialist will enter the limitation into the Trademark database and ensure that an updated registration certificate is issued to the holder.

If a limitation results in the deletion of all goods/services identified in the registered extension of protection, the registration will be cancelled.

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