Chapter 1900

Madrid Protocol

1901 Overview of the Madrid System of International Registration

1902 International Application Originating From the United States

1902.01 Who Can File

1902.02 Minimum Requirements for Date of Receipt of International Application in USPTO

1902.02(a) Form of International Application

1902.02(b) Basic Application or Registration Number

1902.02(c) Name and Address of Applicant

1902.02(d) Reproduction (Drawing) of Mark

1902.02(e) Color Claim

1902.02(f) Identification of Goods/Services

1902.02(g) Classification in International Applications

1902.02(g)(i) Reclassifying Goods/Services

1902.02(g)(ii) United States Classes A, B and 200

1902.02(g)(iii) Kits and Gift Baskets

1902.02(h) List of Contracting Parties

1902.02(i) Fees

1902.02(j) Statement of Entitlement

1902.02(k) Description of Mark

1902.02(l) Indication of Type of Mark

1902.02(m) E-Mail Address

1902.03 Certification of International Application by USPTO

1902.03(a) Petition to Review Refusal to Certify

1902.04 Date of International Registration

1902.05 IB Requirements for Complete International Application

1902.06 Examination of Application by IB

1902.07 Irregularities in International Application

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

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

1902.07(b)(i) Fee Irregularities

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

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

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

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

1902.07(e) Filing Response Directly With the IB

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

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

1902.08(a) USPTO Requirements

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

1902.08(c) Fees for Subsequent Designation

1902.08(d) IB Requirements for Subsequent Designation

1902.08(e) Irregularities in Subsequent Designation

1902.09 Dependence and “Central Attack”: Restriction, Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years

1902.10 Transformation When the USPTO is the Office of Origin

1902.11 Representative

1902.12 USPTO Must Notify IB of Division or Merger of Basic Application or Registration

1903 Payment of Fees

1903.01 Payment of USPTO Fees

1903.02 Payment of International Fees

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

1904.01 Filing Request for Extension of Protection to United States

1904.01(a) Section 66(a) Basis

1904.01(b) Filing Date

1904.01(c) Declaration of Intent to Use Required

1904.01(d) Use Not Required

1904.01(e) Priority

1904.01(f) Filing Fee

1904.01(g) Constructive Use

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

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

1904.02(a) Examined as Regular Application

1904.02(b) Examination of Classification of Goods/Services in §66(a) Applications

1904.02(c) Examination of Identification of Goods/Services in §66(a) Applications

1904.02(c)(i) Acceptable Identifications of Goods/Services

1904.02(c)(ii) Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class

1904.02(c)(iii) Indefinite Identification of Goods/Services that Does not Include any Goods/Services Within the Class

1904.02(c)(iv) Examination of Proposed Amendments and Issuance of Final Requirements For an Acceptable Identification

1904.02(c)(v) Effect of Indicated Classes – No Precedential Value on Later-Filed Applications

1904.02(d) Certification and Collective Marks

1904.02(e) Corrections and Limitations to the International Registration

1904.02(e)(i) Corrections

1904.02(e)(ii) Limitations

1904.02(e)(iii) Limitations vs. Amendments

1904.02(f) Mark Must Be Registrable on Principal Register

1904.02(g) Refusal Must Be Made Within 18 Months

1904.02(h) Issuing Office Actions

1904.02(i) Correspondence Address

1904.02(j) Mark Cannot Be Amended

1904.02(k) Drawings and Descriptions of the Mark

1904.02(l) Jurisdiction

1904.03 Notice of Refusal

1904.03(a) Notice Must be Sent Within 18 Months

1904.03(b) Requirements for Notice of Refusal

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

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

1904.03(e) Confirmation or Withdrawal of Provisional Refusal

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

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

1904.04 Opposition

1904.05 Certificate of Extension of Protection

1904.06 Assignment of Extension of Protection to the United States

1904.07 Invalidation of Protection in United States

1904.08 Cancellation of International Registration By IB

1904.09 Transformation to Application Under §1 or §44

1904.09(a) Requirements for Transformation

1904.09(b) Examination of Transformed Application

1904.10 Affidavits of Use or Excusable Nonuse Required

1904.11 Incontestability

1904.12 Replacement

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

1904.13(a) Limited Amendments to Registered Extension of Protection

1904.13(b) Corrections to Registered Extensions of Protection

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

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

1905 Renewal of International Registrations

1906 Communications With International Bureau Regarding International Registrations

1906.01 Recording Changes in International Register

1906.01(a) Change in Ownership of International Registration

1906.01(a)(i) Requirements for Submitting Changes in Ownership of International Registration Through the USPTO

1906.01(a)(ii) International Fees for Recording Changes of Ownership of International Registration

1906.01(a)(iii) Effect of Change of Ownership of International Registration

1906.01(a)(iv) Dividing an International Registration After Change of Ownership With Respect to Some But Not All of the Goods/Services

1906.01(b) Restriction of Holder’s Rights of Disposal

1906.01(c) Change of the Holder’s Name or Address

1906.01(d) Change of Name or Address of Representative

1906.01(e) Limitation, Renunciation, or Cancellation of International Registration

1906.01(f) Correction of Errors in International Registration

1906.01(g) Merger of International Registrations

1906.01(h) License

1906.01(i) Changes That Cannot Be Made to International Registration

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) is an international treaty that allows a trademark owner to seek registration in any of the countries or intergovernmental organizations that have joined the Madrid Protocol by submitting a single application, called an international application. The international registration system is administered by the International Bureau (“IB”) of the World Intellectual Property Organization (“WIPO”), in Geneva, Switzerland.

The Madrid Protocol became effective in the United States on November 2, 2003. The Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”) amended the Trademark Act to provide that: (1) the owner of a United States application and/or registration may seek protection of its mark in any of the countries or intergovernmental organizations party to the Madrid Protocol by submitting a single international application to the IB through the United States Patent and Trademark Office (“USPTO”); and (2) the holder of an international registration may request an extension of protection of the international registration to the United States. A notice of final rulemaking amending the Trademark Rules of Practice to incorporate the MPIA was published at 68 Fed. Reg. 55748 (Sept. 26, 2003).

The Madrid Protocol, Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (“Common Regs.”), Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (“Guide to International Registration”), Administrative Instructions for the Application of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating Thereto (“Admin. Instrs.”) are available on the IB’s website, at http://www.wipo.int/madrid/en/. The Common Regs. are the procedures agreed to by the parties to the Madrid Protocol regarding the administration of the Madrid Protocol, pursuant to Madrid Protocol Article (“Article”) 10(2)(iii).

References below to the Common Regs., Guide to the International Registration, and Admin. Instrs. refer to the September 2008 editions.