October 23, 2013

1. USPTO Madrid Protocol Seminar onTips for Filing International Applicationsand Maintaining International RegistrationsAfter International Registration IssuesJennifer Chicoski, Administrator ID/Class October 23, 2013

2. A. Dependence • For 5 years from the date of the international registration (IR), the resulting protection remains dependent on the basic application/registration (basic mark). • Any protection extended to the mark in a designated contracting party is also dependent on the basic mark for same period. • Once a decision with respect to a US basic application is made final, USPTO must notify the IB to cancel the IR, either totally or partially, depending upon the circumstances. • The IB will cancel or restrict the IR, as appropriate, and notify all relevant contracting parties. Common Reg. 22(2)(b); TMEP §1902.09.

3. A. Dependence (cont’d) End of Dependency • At the end of the 5-year dependency period, the IR becomes independent of the basic application/registration. • Every designation made from the IR to contracting parties continues to depend on the renewal of the IR itself, but not of the basic mark. • There is no separate dependency for subsequent designations.

4. A. Dependence (cont’d) Ownership of Basic Application/Registration • Once international application (IA) is filed by the same party who owns the basic mark, the validity of the resulting IR is not affected by subsequent assignment or changes of ownership of the basic mark. • 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.

5. A. Dependence (cont’d) Change of Ownership and Dependence • WARNING: The holder of the IR runs the risk of ceasing of effect if the subsequent owner of the basic mark allows it lapse or be cancelled. • Example: If the basic mark is assigned to a new owner who fails to file a §7 affidavit of continued use due during the 5-year dependency period, the basic mark will be cancelled and the IR will be cancelled.

6. A. Dependence (cont’d) • USPTO’s obligations to notify the IB of the outcome of the basic mark extends only to narrowing of the list of goods/services or outright abandonment or cancellation of the basic mark. • Changes in drawing, description, translation, owner, address will not be notified to the IB.

7. B. Vocabulary • “Correction” (Rectification) in an IR corrects mistakes in the International Register. • “Restriction” alters the list of goods/services protected by an IR. • “Limitation” in the list of goods/services is a type of restriction that may affect some or all of the designated contracting parties. • “Renunciation” renounces protection for all of the goods/services in some of the designated contracting parties. • “Cancellation” restricts the IR in respect of all of the designated contracting parties for some or all of the goods/services.

8. C. Request to Change the International Registration IB’s Official Forms to Use • Limitation (MM6) • Renunciation (MM7) • Cancellation (MM8) • Change in Name or Address of Holder (MM9) • Change in Name or Address of Representative (MM10) • Change in Ownership (MM5)

9. D. Corrections in International Registration • Where there is an error concerning an IR in the International Register, the IB will correct the error: • Ex officio; or • Upon request of the: • holder of the IR; or • Office of origin. Common Reg. 28(1); TMEP §1906.01(f). • Some errors must be reported by Office of origin. The IB will notify holder to make request to its Office in such cases.

10. D. Corrections in International Registration (cont’d) Types of Corrections (Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (WIPO Guide) Para. B.II.70.02) • Corrections may involve errors in objective facts recorded in the International Register: • E.g., name or address of holder; date or number of the basic registration; mark is not, in fact, identical to the basic mark. • Corrections to goods/services may only be corrected if a mistake was made by the office that presented the IA to the IB. • Mistakes made by an applicant, holder, or representative in the list of goods/services cannot be corrected. • Corrections to the mark include providing better drawings, flipping inverted drawings, and whole mark corrections. Despite the prohibition in the Madrid Protocol against amending the mark, corrections to the mark are possible and may be material changes.

11. D. Corrections in International Registration (cont’d) Types of Corrections (cont’d) • Corrections may be used to reverse prior actions of the IB: • E.g., change the date of subsequent designation to correct an inadvertently issued notice of death of an IR (i.e., “undo a death”); • E.g., correct a previously notified restriction (e.g., instead of limiting the list of goods to “clothing,” deleted “clothing”). • An applicant’s omission or oversight is not a “mistake” that may be corrected in the IR.

12. D. Corrections in International Registration (cont’d) • The IB follows certain practices for corrections: • When the mistake is on the part of the IB, the error is generally corrected without further question, i.e., ex officio. • When there is an obvious error in the International Register, such that a reader would recognize it as an error, the IB will correct it as soon as it comes to their attention. • When there is an objective error in a recorded fact, including a discrepancy between the mark in the IR versus the mark in the basic application/registration, this may be corrected but should be submitted by the office of origin. • Other requests for correction must involve a mistake by the Office presenting the document to the IB and the request must come from that Office.

13. D. Corrections in International Registration (cont’d) • An error by the Office of origin can only be corrected if a request for correction is received in the IB within 9 months of the date of publication of the erroneous entry in the International Register. Common Reg. 28(4). This time limit does not apply to errors made by the IB, or to non-substantive errors such as the name or address of the holder or obvious mistakes in goods/services.

14. D. Corrections in International Registration (cont’d) • When an error in the International Register has been corrected, the IB notifies: • the holder of the IR; and • the Offices of the designated contracting parties. • The correction is also published in the WIPO Gazette of International Marks. • Designated contracting parties are given a new period of refusal to notify the IB that protection cannot be (or no longer can be) extended to the IR, as corrected. Common Reg. 28(2).

15. D. Limitations in International Registration • “Limitation” is one type of “restriction” in the scope of protection of an IR. • Limitation only concerns the list of goods/services. • Limitation of goods/services is a voluntary submission by the applicant and is filed with the IB. • The IB does not review the scope of the wording of the goods/services in the limitation. • The IB will issue an irregularity with regard to limitations involving classes not included in the IR. Common Reg. 25(1)(a)(ii); TMEP §1906.01(e).

16. D. Limitations in International Registration (cont’d) • Recording a limitation does not remove the goods/services concerned from the IR. • Instead, a limitation narrows the scope of protection in a specified designated contracting party to those goods/services specified in the limitation. • The sole effect is that the holder is requesting protection for only the list of goods/services sent to the designated contracting parties covered by the limitation.

17. D. Limitations in International Registration (cont’d) • The IR covers a finite list of goods/services that may be protected in any Madrid member country, either now or in the future. Goods/services may not be added. • To protect additional goods/services, a new IA may be filed, even if the goods/services are covered by the existing basic application/registration. • To obtain an IR, the minimum that must be requested is at least one good/service in one class extended to at least one member country.

18. D. Limitations in International Registration (cont’d) • Goods/services in the IR that are not extended by virtue of a limitation can be subsequently designated to any contracting party. • Goods/Services in the IR that are extended but refused may be extended later by subsequent designation. • Goods/services and their corresponding classes are taken into account when calculating any supplementary fees due upon renewal.

19. E. Renunciation • Renunciation renounces protection for all of the goods/services in some of the designated contracting parties. Common Reg. 25(1)(a)(iii). • Request to record a renunciation of an IR must be filed with the IB (MM7). It cannot be filed through the USPTO. 37 C.F.R. §7.22. • Renounced goods/services may be re-designated in a subsequent designation, as they remain part of the IR. Common Reg. 25(1)(a)(iii); TMEP 1906.01(e).

20. F. Cancellation • Cancellation restricts the IR in respect of all of the designated contracting parties for some or all of the goods/services. Common Reg. 25(1)(a)(v). • Request to record a cancellation of an IR must be filed with the IB (MM8). It cannot be filed through the USPTO. 37 C.F.R. §7.22. • The cancelled goods/services may not be re-designated, as they are restricted out of the IR. • To seek protection of the mark on cancelled goods/services, a new IA must be filed. Common Reg. 25(1)(a)(v); TMEP §1906.01(e).

21. G. Ceasing of Effect • The IR “ceases” to have effect if the basic mark is: canceled, renounced, revoked, invalidated, expires, is withdrawn, or is the subject of a final decision of rejection by the USPTO. • This “ceasing of effect” can be the result of third party attack or ex officio action. WIPO Guide Paras. B.II.84.01-84.03.

22. G. Ceasing of Effect (cont’d) • USPTO is obligated to notify the IB or any “ceasing” of the basic mark within the 5-year dependency period. • The effect on the IR may be “total” or “partial” cancellation: • “Total” effects the entire IR; • “Partial” involves only certain goods/services/classes. • The IB will inscribe the notice in the International Register and notify each affected designated contracting party accordingly.

23. G. Ceasing of Effect (cont’d) • When the US basic application/registration that forms the basis of the IR ceases to have effect within the 5-year dependency period, the USPTO notifies the IB of the following decisions: • Basic application is finally refused ex officio; • Basic application is refused due to opposition; • Basic application is withdrawn or abandoned; • Basic application has lapsed; • Amendments narrowing the goods/services (i.e., partial ceasing): • Basic registration is renounced, canceled, revoked or declared to be invalid; • Basic registration has lapsed before the end of the 5-year dependency period.

24. G. Ceasing of Effect (cont’d) • No need for the USPTO to give the IB any indication of the grounds for the refusal or other decision.

25. G. Ceasing of Effect (cont’d) • Ceasing of effect can result from an action commenced within the 5-year period but not resolved until after the period ends, e.g., appeal, third party opposition, cancellation proceeding. Common Reg. 22(1)(b).

26. G. Ceasing of Effect (cont’d) • When the USPTO is aware of any of the following, a notice to the IB will be sent to make clear that the action has not yet resulted in a final decision: • Judicial action concerning basic registration; • Appeal against decision of USPTO refusing basic application; • Opposition to basic application; • Cancellation action against basic registration. Common Reg. 22(1)(b).

27. G. Ceasing of Effect (cont’d) • Warning: Changes made to the listing and classification of goods/services in the basic application/registration can have unintended (negative) consequences in IR. • Example: If in response to USPTO examining attorney, “headgear” is amended to “motorcycle helmets” in Class 9, the USPTO will notify the IB that “headgear” in Class 25 has “ceased” to have effect in the US. • 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.

28. H. Renewal of International Registration • Provisions of the Madrid Protocol centralize the renewal process for IRs. • Renewals are filed directly with the IB and are due every 10 years from the IR date. • The IB offers forms for renewal: • Online electronic form – “WIPO Marks E-Renewal System” • Paper form – MM11 • Payment may be made by credit card or by a WIPO current account. • If the holder fails to renew, in whole or in part, the IB will notify the designated contracting parties of the “death” of the IR. • Necessary changes to the IR should be made before renewal as the renewal itself cannot include changes, not even address changes. Common Regs. 29-31; TMEP §1905.

29. I. Transformation • Transformation may take place only where the IR has been cancelled, in respect to all or some of the goods/services, at the request of the Office of origin. • Transformation is not available where the IR has been cancelled at the request of the holder. • The failure of the holder to renew the IR as to the US counts as being “at the request” of the holder. If the holder forgets to renew as to the US while the request remains pending, the result is that the US application is abandoned and cannot be transformed. • Example: A US application was abandoned because when the renewal came due, the holder did not submit a fee for the US, which it had subsequently designated only a few months earlier. There was no way for the holder to revive the US extension of protection through USPTO’s ordinary means. Article 9quinquies; WIPO Guide Paras. B.II.88.01-88.07; TMEP §1902.10.

30. I. Transformation (cont’d) Requirements • In order to claim the benefits of transformation, the holder of the cancelled IR must file a national (or regional) application within 3 months of the date of cancellation of the IR. Madrid Protocol Article 9quinquies . • The goods/services listed in the new national application must be covered by the list of goods/services in the cancelled IR (or in the cancelled part of the IR) with respect to the country concerned.

31. I. Transformation (cont’d) Requirements (cont’d) • The holder will receive the benefit of an “effective filing date” that is dependent upon the nature of the initial request for extension of protection: • Date of the IR; • Date of the Subsequent Designation; • Paris priority claim if within 6 months of the date of the IR. • The filing date of the “transformed” application, in the USPTO database, will be the filing date of the original request for extension of protection. • Priority claim information will not appear but will inure to the benefit of the transformed application.

32. I. Transformation (cont’d) Requirements (cont’d) • Article 9quinquies specifically indicates that a nationally filed application will be treated as if it had been filed on the date of the IR only if: • it is filed in the national office within 3 months from the date on which the IR is cancelled; • the goods/services are covered by the list of goods/services contained in the IR with respect to the particular country concerned; and • the application complies with all requirements of the national office, INCLUDING FEES. • Requests sent prior to the USPTO receiving notification from the IB will not be acted upon until such notice is received.

33. I. Transformation (cont’d) Modalities for Transformation • The Guide to the International Registration of Marks states: “It is up to each Contracting Party to determine the modalities for giving effect to such transformation into a national or regional application. It may require that such an application comply with all requirements that apply to a national or regional application, including requirements concerning fees.” WIPO Guide Para. B.II.88.06. • USPTO requires a filing fee for each class of goods/services transformed. • Other member parties may not charge additional fees. Please refer to Member Information at www.wipo.int.

34. I. Transformation (cont’d) Modalities for Transformation (cont’d) • Once the USPTO notifies the IB of the occurrence of one of these decisions, the IB will cancel the IR, as appropriate. • The holder may then file a request for transformation in any of the designated countries for any of the goods/services that were covered by the goods/services in the cancelled IR (or in the canceled part of the IR) with respect to the contracting party concerned. • If a contracting party has otherwise totally refused protection of the original request for extension of protection, transformation may not take place in that country.

35. J. Changes to Holder or Representativeof International Registration Must be Filed with the IB • Changes in owner name or address (MM9) • Change in ownership (MM5) • Assignee must meet same entitlement criteria. • Restriction of Holder’s Right of Disposal (MM19) • Security interest • Changes in representative – (MM10) – official form not required but is available • Ensure complete correspondence address of new representative is included

36. J. Changes to Holder or Representativeof International Registration (cont’d) Must be Filed with the IB (cont’d) • Who May Submit the Forms: • As long as holder has signed, anyone may send the form on behalf the holder • Where to submit: • Fax, email, or post, as identified on the cover page of every form • Fees: • Payment may be made by credit card or by a WIPO current account

37. J. Changes to Holder or Representativeof International Registration (cont’d) Cannot Obtain Signature of Holder • Request to Record Assignments at the IB – when signature of holder cannot be obtained. 37 C.F.R. § § 7.23 and 7.24. • If invoking the rule, must explicitly state that, after a good faith effort, the signature of the holder could not be obtained. • Fee: $100 transmittal fee must be submitted with the request to the USPTO. • IB fees must be paid directly to the IB. • Upcoming rule change: Will allow one to invoke the rule for the assignment of an IR based on US application/registration.

38. J. Changes to Holder or Representativeof International Registration (cont’d) Cannot Obtain Signature of Holder (cont’d) • Mode and Method of Filing: • Email request to MPU@uspto.gov: • Request must outline the requirements stated in 37 C.F.R. §§7.23 or 7.24 • Word or PDF format • Attach copy of MM5/MM19 • Authorization to charge deposit account or attach credit card authorization form • Paper mail: • Request must outline the requirements stated in 37 C.F.R. §§7.23 or 7.24 • Attach copy of MM5/MM19 • Authorization to charge deposit account or include a check or credit card authorization form

39. Thank You!