1904.09(a) Requirements for Transformation
A request for transformation must be filed within three months after the date on which the international registration was cancelled, in whole or in part. Article 9quinquies(i); 15 U.S.C. §1141j(c). The request must include:
- (1) The serial number or registration number of the extension of protection to the United States (i.e., the §66(a) application or registered extension of protection);
- (2) The name and address of the holder of the international registration;
- (3) The goods and/or services to be transformed, if other than all the goods and/or services that have been cancelled;
- (4) The domestic application filing fee required by 37 C.F.R. §2.6(a)(1) for at least one class of goods or services; and
- (5) An email address for receipt of correspondence from the USPTO.
The holder must file the request for transformation directly with the USPTO, and the transformed application will be examined as a domestic application.
Under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and Article 9quinquies, transformation may take place only if the international registration is cancelled or restricted at the request of the Office of Origin under Article 6(4), due to the cancellation of the basic application and/or registration. It is not available if the international registration expires for failure to renew, is cancelled or restricted at the request of the holder, or is cancelled or restricted for any other reason.
Generally, a request for transformation must be filed electronically using TEAS by clicking on "Madrid Protocol forms" at https://teas.uspto.gov. See 37 C.F.R. §§2.23(a), 7.25(a); TMEP §301.01. See TMEP §301.02 regarding limited exceptions for paper submissions, §305 regarding mailing permitted paper filings to the USPTO, and §307 regarding hand delivery of documents to the USPTO.
Requests for transformation may not be submitted by email or fax and, if submitted by such means, will not be accorded a date of receipt. 37 C.F.R. §2.195(c).