USPTO Madrid Protocol Seminar on Tips for Filing International Applications and Maintaining International Registrations Preparing and Filing an International Application Karen M. Strzyz and Attiya Malik, Staff Attorneys

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USPTO Madrid Protocol Seminar onTips for Filing
International Applicationsand Maintaining
International RegistrationsPreparing and Filing
an International ApplicationKaren M. Strzyz and
Attiya Malik, Staff Attorneys
October 23, 2013
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A. USPTO TEASi Forms

• USPTO accepts 2 types of filing of international
  applications (IAs)
• Electronic Applications filed through the
  Trademark Electronic Application Submission
  International System (TEASi) on USPTO website.
• Paper Applications must be submitted to USPTO
  on IBs MM2 form, available from WIPO
• Must use MM2 US regulations written to require
  such.

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A. USPTO TEASi Forms (contd)

• Electronically Filed (TEASi) IA
• TEASi forms on USPTO website allow filing an IA
  in 2 ways
• Pre-populated forms
• Free-text forms

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A. USPTO TEASi Forms (contd)

• Pre-populated Form Advisories
• Automatically displays the exact information
  already in the USPTO database for one specific US
  basic serial number or registration number.
• If no changes are made to any data fields, USPTO
  automatically certifies the IA and transmits it
  directly to the IB, without independent review of
  this data. No human review of data.
• If any changes are made to the data fields, an
  independent review of this data will occur by the
  MPU before the application can be certified and
  forwarded to the IB.

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A. USPTO TEASi Forms (contd)

• Pre-populated Form Advisories (contd)
• If there are mistakes by the applicant in the
  basic application, they will be reflected in the
  IA. They will become part of the international
  registration (IR) and cannot be corrected.
• This may affect protection in designated
  countries.
• Examples hyphens, punctuation, wrong type of
  mark.
• Color image and color not claimed will generate a
  black and white image.
• Assignment did not automatically upload. Check
  assignment record.

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A. USPTO TEASi Forms (contd)

• Free-Text Form Used When
• There is more than one underlying US basic
  application/registration on which the IA is
  based or
• The US basic application being used as the basis
  is not yet uploaded into USPTOs database as of
  the time of filing the IA.

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A. USPTO TEASi Forms (contd)

• Free-Text Form Advisories
• Information is NOT automatically certified.
• Forms are routed to the USPTOs Madrid Processing
  Unit (MPU) for review by trained Trademark
  Specialists.
• Trademark Specialists review the data and certify
  that the information contained in the IA
  corresponds to the information in the basic
  application/registration.
• Because the form must be manually completed, if
  applicant does not replicate the content of the
  basic application/registration exactly as
  required, the IA may be denied certification.

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A. USPTO TEASi Forms (contd)

• For Both Electronically-Filed Forms
• The Application for International Registration
  Wizard asks applicant several questions to
  create the appropriate application sections that
  meet applicants specific needs.
• Example If designating the European Community,
  does applicant wish to claim seniority?

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B. Paper-Filed Applications

• Must use IBs MM2 form.
• MM2 is for designations under the Madrid Protocol
  only, and may be download from WIPOs website.
• MM2 must be typewritten no hand-written forms
  will be accepted.
• Common Regs. 9(2)(a) and 11(4)(a)(i) TMEP
  1902.02(a).

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C. International ApplicationFiling Requirements

• International Application Must Include
• (Common Reg. 9(4)(a) 37 C.F.R. 7.11 TMEP
  1902.02)
• Filing date and serial number of the basic
  application and/or registration date and
  registration number of the basic registration
• Owner (name and entity) must be identical to the
  owner of the basic application/registration
• Applicants current address
• Reproduction of the mark must be the same as the
  mark in the basic application/registration
• If mark in the basic is depicted in black and
  white and a color claim is not included,
  reproduction must be black and white
• If mark in the basic is depicted in black and
  white and includes a color claim, must include
  both a black and white reproduction and a color
  reproduction
• If mark in the basic is depicted in color,
  reproduction must be in color
• If paper international application, mark must
  appear in the box designated on the MM2 form

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C. International ApplicationFiling Requirements
(contd)

• International Application Must Include (contd)
• (Common Reg. 9(4)(a) 37 C.F.R. 7.11 TMEP
  1902.02)
• Description of the mark must be the same as the
  description in the basic application/registration
  
• Color claim must be included, if appropriate
• Indication of the type of mark, if the mark in
  the basic application/registration is three
  dimensional mark sound mark collective mark or
  certification mark
• List of goods/services is identical to or
  narrower than the list of goods/services in each
  claimed basic application/registration and
  classified according to the Nice Agreement
  Concerning the International Classification of
  Goods and Services for the Purposes of the
  Registration of Marks (Nice Agreement) in
  effect as of the filing date of the international
  application
• List of designated contracting parties. If the
  goods/services are not the same for each
  designated contracting party, list the
  goods/services in the international application
  that pertain to each designated contracting party

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C. International ApplicationFiling Requirements
(contd)

• International Application Must Include (contd)
• (Common Reg. 9(4)(a) 37 C.F.R. 7.11 TMEP
  1902.02)
• Statement that applicant is entitled to file an
  international application in the Office,
  specifying that applicant is a national of the
  US has a domicile in the US or has a real and
  effective industrial or commercial establishment
  in the US. Where applicant's address is not in
  the US, must provide address of applicants US
  domicile or establishment
• Certification fee
• If filed via TEASi, the international application
  fees for all classes and the fees for all
  designated contracting parties and
• If filed via TEASi, e-mail address for receipt of
  correspondence from the office.

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D. Ownership

• Owner must be identical in the IA and in all
  basic applications/registrations.
• Examples of common omissions/additions
• Name, e.g., The or Inc.
• Entity type, e.g., Corp. or LLC
• State/Country of organization, e.g., New York
• Common Reg. 9(4)(a)(i) 37 C.F.R. 7.11(a)(2)
  TMEP 1902.02(c).

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D. Ownership (contd)

• How to fix ownership in basic applications/
  registrations?
• Assignment file with the Assignment Recordation
  Branch and ensure USPTO database is updated. See
  TMEP Ch. 500.
• Amendment, if correctible
• Application file an amendment to the
  application, depending on status of application.
• Registration file 7 amendment. 37 C.F.R.
  2.173 TMEP 1609.01.
• Example Mistake in owner name or entity. TMEP
  1201.02 (c).

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D. Ownership (contd)

• Once an IA is filed by the owner of the basic
  application/registration, the validity of the
  resulting IR is not affected by subsequent
  assignment or changes of ownership of the basic
  application/registration.
• Example If a parent corporation assigns the US
  basic application to its subsidiary, or an
  individual assigns the US basic registration to a
  corporate entity, the IR remains in the name of
  the original holder with no consequences.

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E. Applicants Address

• If applicants current address is outside of the
  US, must provide the address of the US domicile
  or establishment.
• Common Reg. 9(4)(a)(ii) 37 C.F.R. 7.11(a)(2)
  TMEP 1902.02(c).

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F. Applicants Representative (Optional)

• If a representative is appointed
• Name and complete address of representative must
  be listed
• Telephone/fax number and email address of
  representative should be provided
• Law firm may be appointed
• Better to identify firm rather than individual
  attorney
• It is recommended to put only one attorney name
• Does not have to be the same attorney and/or
  domestic representative as appointed in the basic
  application/registration
• No power of attorney or other separate document
  should be sent to the IB
• Appointment only empowers representative to act
  before the IB. It may become necessary to
  appoint one or more additional representatives to
  act before the offices of designated contracting
  parties. Example refusal issued by an office.
• Common Regs. 3(2) and 9(4)(a)(iii) TMEP 1902.11.

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G. Entitlement

• Applicant must specify the entitlement grounds
• is a national of (citizen of) the US
• has a domicile in the US must indicate the US
  address of the claimed entitlement or
• has a real and effective commercial or industrial
  establishment in the US must indicate the US
  address of the claimed entitlement.
• Common Reg. 9(5)(b) 37 C.F.R. 7.11(a)(11) TMEP
  1902.02(j).
• Paper IA submitted on MM2
• Box 3 Entitlement to File US filer should not
  check option 3(a)(ii). (where the contracting
  party mentioned in item 1 is an organization, the
  name of the state of which the applicant is a
  national). This option is when the Office of
  origin is an organization such as OHIM or Benelux.

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G. Entitlement (contd)

• United States includes and embraces all
  territory which is under US jurisdiction and
  control.
• This includes the several states (50 states),
  the District of Columbia, the commonwealths
  (Puerto Rico, Northern Mariana Islands), the
  territories and possessions of the US (Guam, U.S.
  Virgin Islands, American Samoa).
• National has the same meaning as in Article 2
  of the Paris Convention. It can be the national
  citizenship of an individual or the jurisdiction
  of formation/incorporation of a legal entity.
• The question of whether a natural person or a
  legal entity is a national of or has a
  domicile in a particular country is a matter of
  the law of each designated country.

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G. Entitlement (contd)

• Real and effective industrial or commercial
  establishment is taken from Article 3 of the
  Paris Convention.
• Need not be the principal place of business, but
  must be real, i.e., not fraudulent or
  fictitious.
• While no case law exists relating to Madrid
  filings, the same meaning of real and effective
  industrial or commercial establishment that
  applies in 44 filings applies in the context of
  Madrid entitlement. Section 44 is based on the
  Paris Convention and Madrid incorporates
  provisions of Paris.

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G. Entitlement (contd)

• Establishing Country of Origin
• The presence of an applicants wholly owned
  subsidiary in a country does not, by itself,
  establish country of origin. In re Aktiebolaget
  Electrolux, 182 USPQ 255 (TTAB 1974). The fact
  that the applicant is wholly owned by a foreign
  company does not establish country of origin.
  Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783
  (TTAB 2006).
• TMEP 1002.04.
• USPTO cannot advise about entitlement.
• An enterprise may have several real and effective
  industrial or commercial establishments in
  different countries that are party to Madrid and,
  thus, may have the option of several countries of
  origin.

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H. Reproduction of Mark

• Must be the same as in basic application/registrat
  ion.
• Nature of the mark
• Standard character
• Typed drawings are legally equivalent to standard
  character
• Non-standard character
• description of mark
• color(s) claimed
• color location statement
• Common Regs. 9(4)(a)(vi)-(viibis) 37 C.F.R.
  7.11(a)(3)-(4) TMEP 1902.02(d)-(e).

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H. Reproduction of Mark (contd)

• If basic mark is depicted in black and white and
  a color claim is not included, reproduction must
  be black and white.
• If basic mark is depicted in black and white and
  includes a color claim, must include both a black
  and white reproduction and a color reproduction.
• This pertains to older registrations containing
  black and white drawings with lining statements.
• If basic mark is depicted in color, regardless of
  whether a color claim is included, reproduction
  must be in color.

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H. Reproduction of Mark (contd)

• If paper IA, mark must appear and fit in Box 7
  designated on the MM2 form.
• Note for TEASi filing using pre-pop form
• If the base application/registration is in color,
  must claim color in the IA. Unchecking the color
  claim box on the TEASi form will generate a black
  and white image. This will result in denial of
  certification. If color is not intended in the
  IA, must amend the basic mark to black and white.

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H. Reproduction of Mark (contd)

• If not the same, all basic(s) should be corrected
  before filing IA
• Application contact examining attorney or file
  post publication amendment, depending on
  application status.
• Registration file 7 amendment. 37 C.F.R.
  2.173 TMEP 1609.01.

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I. Description of Mark

• Must be the same as the description of the mark
  in the basic application/registration.
• Common Reg. 9(4)(a)(xi) 37 C.F.R. 7.11(a)(5)
  TMEP 1902.02(k).
• A color claim statement must be included, if
  appropriate.
• Common Regs. 9(4)(a)(vii)-(viibis) 37 C.F.R.
  7.11(a)(4) and 7.12 TMEP 1902.02(e).

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I. Description of Mark (contd)

• Special Type/Category of Mark
• If the basic mark is one of the following, the IA
  must indicate the same by checking the
  appropriate box
• Three dimensional mark checking this box
  indicates the mark is trade dress (i.e., product
  design, product packaging, interior/exterior of
  buildings)
• Sound mark or
• Collective mark or certification mark.
• Common Regs. 9(4)(a)(viii)-(x) 37 C.F.R.
  7.11(a)(6) TMEP 1902.02(l).

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I. Description of Mark (contd)

• TEASi Free-text form mark description field
• Mark description field This information must
  be identical to the information in the basic
  application/registration, even if the description
  in the basic is not accurate.
• Slide updated 10/24/13.

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I. Description of Mark (contd)

• TEASi Free-text form when basic mark is in color
  but color is not yet claimed in basic
• The parts of the mark in color consist of
  field This information should be identical to
  the information in the Mark description field,
  even if the description in the basic
  application/registration is not accurate.
• For older basic registrations containing lining
  statements, may add color statement describing
  where the colors appear in the mark.
• Slide updated 10/24/13.

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I. Description of Mark (contd)

• TEASi Free-text form when basic mark is in color
  but color is not yet claimed in basic (contd)
• The color(s) in the mark is/are field If the
  basic application/registration contains a color
  claim, it must appear here. If the basic is in
  color but there is no color claim statement, do
  not identify color(s) here.
• Slide updated 10/24/13.

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I. Description of Mark (contd)

• Paper MM2 form when color is claimed
• Box 8 Color(s) Claimed
• 8(a) If the basic application/registration
  contains a color claim, check the box and list
  colors claimed in the base.
• 8(b) This field is for a color location
  statement. This information must be identical to
  the information stated in the Box 9(e)
  Description of the mark field in the IA.
• Box 9 Miscellaneous Indications
• 9(e) Description of the mark This information
  must be identical to the description information
  in the basic application/registration, even if
  the description in the basic is not accurate.

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J. Identification of Goods/Services

• Must be the same as or less than the
  goods/services in the US basic application/registr
  ation.
• If not the same for each designated contracting
  party, must include a limitation specifically
  listing those goods/services that pertain to each
  designated contracting party.
• Common Reg. 9(4)(a)(xiii) 37 C.F.R. 7.11(a)(7)
  TMEP 1902.02(f).

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J. Identification of Goods/Services (contd)

• If limiting goods/services/classes in the IA with
  respect to some or all of the designated
  countries
• The limitation must be within scope of the
  goods/services in the basic application/registrati
  on.
• 37 C.F.R. 7.11(a)(7) TMEP 1902.02(f) see also
  TMEP 1402.07-(e).

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K. Classification of Goods/Services

• USPTO does not certify classification. TMEP
  1902.02(g).
• Applicant must select a class from the edition of
  the Nice Agreement in effect as of the filing
  date of the IR. 37 C.F.R. 7.11(a)(7) TMEP
  1902.02(g).
• Classification may be added/changed but only in
  accordance with the Nice Agreement. TMEP
  1902.02(g) and 1902.02(g)(i).

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K. Classification of Goods/Services (contd)

• If incorrect, the IB will issue a notice of
  irregularity and require applicant to re-classify
  and pay any fees due.
• If fees due are not paid, the IA is abandoned.
• Applicant may delete goods/services instead of
  adding class(es) and/or paying more fees OR try
  to explain to the IB why the goods/services, as
  worded, are classified correctly.
• Slide updated 10/24/13.

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L. Claiming Priority (Optional)

• To claim priority under Paris Convention
• The IA must contain a claim of priority and
• The filing date of the first filing that forms
  the basis of the priority claim must be within 6
  months of the filing of the IA.
• The IB will disregard any claimed priority date
  that is more than 6 months.
• Common Reg. 9(4)(a)(iv) and 14(2)(i) TMEP
  1902.05.
• Slide updated 10/24/13.

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L. Claiming Priority (Optional) (contd)

• If the earlier filing does not relate to all the
  goods/services listed in IA, must list the
  goods/services to which it does relate.
• NOTE If priority is based on a US basic
  application, must list the US application serial
  number and filing date in both the Basic
  Application and the Priority Claimed sections
  of the IA.
• The MM2 form has 2 separate boxes, one for the
  basic applications/registrations numbers (Box 5)
  and one for the filing numbers on which priority
  is claimed (Box 6). If the 2nd box is not
  completed, the priority claim will not be
  accepted.

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M. Claiming Seniority (Optional)

• Claiming seniority is optional.
• To claim seniority
• An applicant designating the European Community
  may claim seniority of one or more earlier
  registrations in, or for, a Member State of the
  European Community for the same mark and covering
  the same goods/services by indicating the
  following
• Each Member State in or for which the earlier
  mark is registered
• Date from which the earlier registration is
  effective
• Registration number and
• Goods/Services covered by the earlier
  registration.
• Common Reg. 9(5)(g)(i) TMEP 1902.02(h) and
  1902.05.
• Second working language
• If paper IA (MM2), must select a second language
  to avoid an irregularity.

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N. Specific Requirements of Designated
Contracting Parties

• Information may be provided in the IA to avoid a
  provisional refusal or requirement by a
  designated contracting party, e.g.,
• Translation of elements of mark into English,
  French, or Spanish. Common Reg. 9(4)(b)(iii)
  TMEP 1902.05.
• Indication that terms in mark have no meaning and
  cannot be translated
• Disclaimer of any part of the mark. Common Reg.
  9(4)(b)(v) TMEP 1902.05.
• Just because disclaimer exists in the basic
  application/registration, it is not required to
  be included in the IA.
• Slide updated 10/24/13.

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O. Miscellaneous

• Marks on Supplemental Register
• If a mark is registered on the Supplemental
  Register in the US, it may be used a basic
  application/registration.
• Substantive Refusals
• Just because mark is, for example, found
  descriptive in the US does not mean it will be
  found descriptive in other designated countries.

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O. Miscellaneous (contd)

• Consequences of Filing an International
  Application Shortly After Filing the Basic
  Application
• During prosecution of the US basic application,
  especially 1(b), amendments may be made and the
  mark and/or goods/services that eventually
  register may be different than originally filed.
• When the US basic registration issues, the IR
• Is not updated with the mark that registered in
  the US
• Is updated with the goods/services that
  registered in the US.
• This may result in the IR protecting one type of
  mark and/or goods/services and the basic
  registration protecting a different type of mark
  and/or goods/services.

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O. Miscellaneous (contd)

• Consequences of Filing an International
  Application Shortly After Filing the Basic
  Application
• Reproduction of the Mark Amendments to the US
  basic mark and the mark that eventually registers
  may be quite different than the mark that is
  registered in the IR.
• Example Basic mark is filed as RIGHT-ON. The
  IA is filed and mark registers as RIGHT-ON. The
  basic mark then registers as RIGHT ON (without
  the hyphen). There is no provision in the Madrid
  rules to change the mark in the IR to RIGHT ON.

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O. Miscellaneous (contd)

• Consequences of Filing an International
  Application Shortly After Filing the Basic
  Application
• Goods/Services Amendments to goods/services in
  the US basic application may affect options when
  responding to notices of irregularity concerning
  the goods/services listed in the IA.
• Example Basic mark is filed for clothing. The
  IA is filed and mark registers for clothing.
  The goods are amended during prosecution and the
  basic mark then registers for shirts, pants, and
  hats. The IR will be updated to reflect
  shirts, pants, and hats.

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O. Miscellaneous (contd)

• Consequences of Filing an International
  Application Shortly After Filing the Basic
  Application
• Encourage IA filers to WAIT until at least the
  issuance of the first USPTO Office action.
• May claim priority so long as the IA is filed
  within 6 months of the filing of the US basic
  application.

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Thank You!