1902.08    Subsequent Designation - Request for Extension of Protection Subsequent to International Registration

A subsequent designation is a request by the holder of an international registration for an extension of protection of the international registration to additional Contracting Parties, made after the IB registers the mark.  The requirements for a subsequent designation are set forth in Article 3ter(2) and Regulations Rule 24.  The holder may file the subsequent designation directly with the IB.  There is a form for filing a subsequent designation, the MM4 form, on the IB website at https://www.wipo.int/madrid/en/forms/.

A holder may file a subsequent designation through the USPTO if:  (1) the international registration is based on a basic application filed with the USPTO and/or a basic registration issued by the USPTO; and (2) the holder is a national of, is domiciled in, or has a real and effective business or commercial establishment in the United States.  15 U.S.C. §1141d; 37 C.F.R. §§7.21(a)–(b).

1902.08(a)    USPTO Requirements

The minimum requirements for a date of receipt of a subsequent designation in the USPTO are set forth in 37 C.F.R. §7.21(b), and are reproduced below:

  • The international registration number;
  • The serial number of the U.S. application and/or the registration number of the U.S. registration that formed the basis of the international registration;
  • The name and address of the holder of the international registration;
  • A statement that the holder is entitled to file a subsequent designation through the USPTO, specifying that the holder:  (1) is a national of the United States; (2) has a domicile in the United States; or (3) has a real and effective industrial or commercial establishment in the United States.  If a holder’s address is not in the United States, the holder must provide the address of its United States domicile or establishment;
  • A list of goods/services that is identical to or narrower than the goods/services in the international registration;
  • A list of the Contracting Parties designated for an extension of protection;
  • The USPTO transmittal fee;
  • The international fees required by the IB for a subsequent designation filed through TEAS; and
  • An email address for receipt of correspondence from the USPTO for a subsequent designation filed through TEAS.

See TMEP §1902.08(b) regarding the form for filing a subsequent designation through the USPTO, and §1902.08(c) regarding the international fees for a subsequent designation.

The USPTO does not certify subsequent designations.  If a subsequent designation meets the requirements set forth in 37 C.F.R. §7.21(b), the USPTO will forward it to the IB.  37 C.F.R. §7.21(c).  If the subsequent designation does not meet these requirements, the USPTO will not forward the subsequent designation and will notify the holder of the reasons.  The USPTO transmittal fee is nonrefundable.  37 C.F.R. §7.21(d).

If the subsequent designation meets the requirements of Regulations Rule 24(8), the IB will record it and notify both the USPTO and the holder of the recordation.  The subsequent designation will bear the date of receipt in the USPTO, provided that the IB receives it within two months of that date.  If the IB does not receive the subsequent designation within two months of the date of receipt in the USPTO, the subsequent designation will bear the date of receipt in the IB.  Regs. Rule 24(6)(b).

1902.08(b)    Form for Filing Subsequent Designation Through the USPTO

The holder of an international registration submitting a subsequent designation through the USPTO must file using the TEAS Subsequent Designation form. See 37 C.F.R. §7.21(b).

Permitted Paper Filing. When permitted to be filed on paper (see TMEP §1902.02(a)), the subsequent designation must be filed using the official IB form MM4 posted on the IB website at https://www.wipo.int/madrid/en/forms /. The IB’s Guide to International Registration, available on the IB’s website, has instructions for completing the subsequent designation form, at B.II.56.37.01–B.II.60.37.22.

The IB will not accept paper applications that are not submitted on the official IB form.  Article 3ter(2); Regs. Rule 24(2)(b); Admin. Instrs. §§2, 6(a). The form may not be handwritten.  Article 3ter(2); Regs. Rule 24(2)(b); Admin. Instrs. §§2, 6(a).  The holder should complete the MM4 form online, print the completed form, and submit it to the USPTO by mail, hand delivery, or courier service. The holder should include a self-addressed, stamped postcard with the subsequent designation. Upon receipt of the subsequent designation, the USPTO will place a label indicating the receipt date on the documents and return the postcard to the holder.

The applicant may mail the completed paper application form using the first-class mail service of the USPS to the address in TMEP §305.01. See §§305.02-305.02(h) regarding certificate of mailing procedures and §§305.03-305.03(e) regarding Priority Mail Express® procedures.

Alternatively, the applicant may deliver the application by hand or courier. See TMEP §307 regarding hand delivery of documents to the USPTO.

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

1902.08(c)    Fees for Subsequent Designation

USPTO Transmittal Fee.  The subsequent designation must include the USPTO transmittal fee or the USPTO will not forward it to the IB.  37 C.F.R. §7.21(a)(7).

International Fees.  For subsequent designations filed through TEAS, all international fees for the subsequent designation must be paid at the time of submission.  37 C.F.R. §7.21(b)(8).  International fees for subsequent designations permitted to be filed on paper must be paid directly to the IB in Swiss currency, either before or after submission of the subsequent designation.  However, international fees paid after the IB receives the subsequent designation could result in a notice of irregularity issued by the IB.   

See TMEP §1903.02 regarding payment of international fees.

1902.08(d)    IB Requirements for Subsequent Designation

The requirements for a subsequent designation are set forth in Article 3ter(2) and Regulation Rule 24.  If the subsequent designation meets the minimum requirements for a date of receipt set forth in 37 C.F.R. §7.21(b)  (see TMEP §1902.08(a)), the USPTO will forward the subsequent designation to the IB.   The USPTO will not examine it to determine whether it is complete.  The IB will examine it for completeness.

If the subsequent designation meets the applicable requirements, the IB will record it in the International Register and notify the holder and the Offices of the designated Contracting Parties.  The IB will also notify the USPTO, if the subsequent designation was submitted through the USPTO.  Regs. Rule 24(8).

1902.08(e)    Irregularities in Subsequent Designation

If a subsequent designation is sent to the IB through the USPTO, the IB will notify both the holder and the USPTO of any irregularity.  Regs. Rule 24(5)(a).  Corrections of any irregularity in a subsequent designation must be sent directly to the IB, even if the subsequent designation was sent through the USPTO.  37 C.F.R. §7.21(e).  The USPTO will make note of receipt of the notice of irregularity in its automated records, but will not take any other action.