T.M.E.P. § 1902.02
Minimum Requirements for Date of Receipt of International Application in USPTO

Executive summary:

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

The minimum requirements for accordance of a date of receipt of an international application in the USPTO are set forth in 37 C.F.R. 7.11.

§7.11 Requirements for international application originating from the United States.

(a) The Office will grant a date of receipt to an international application that is either filed through TEAS, or typed on the official paper form issued by the International Bureau. The international application must include all of the following:

(1) The filing date and serial number of the basic application and/or the registration date and registration number of the basic registration;

(2) The name of the international applicant that is identical to the name of the applicant or registrant as it appears in the basic application or basic registration and applicant's current address;

(3) A reproduction of the mark that is the same as the mark in the basic application and/or registration and that meets the requirements of §2.52.

(i) If the mark in the basic application and/or registration is depicted in black and white and the basic application or registration does not include a color claim, the reproduction of the mark in the international application must be black and white.

(ii) If the mark in the basic application or registration is depicted in black and white and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark.

(iii) If the mark in the basic application and/or registration is depicted in color, the reproduction of the mark in the international application must be in color.

(iv) If the international application is filed on paper, the mark must be no more than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide, and must appear in the box designated by the International Bureau on the International Bureau's official form;

(4) A color claim as set out in §7.12, if appropriate;

(5) A description of the mark that is the same as the description of the mark in the basic application or registration, as appropriate;

(6) An indication of the type of mark if the mark in the basic application and/or registration is a three-dimensional mark, a sound mark, a collective mark or a certification mark;

(7) A list of the goods and/or services that is identical to or narrower than the list of goods and/or services in each claimed basic application or registration and classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;

(8) A list of the designated Contracting Parties. If the goods and/or services in the international application are not the same for each designated Contracting Party, the application must list the goods and/or services in the international application that pertain to each designated Contracting Party;

(9) The certification fee required by §7.6;

(10) If the application is filed through TEAS, the international application fees for all classes, and the fees for all designated Contracting Parties identified in the international application ( see §7.7);

(11) A statement that the applicant is entitled to file an international application in the Office, specifying that applicant: is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where an applicant's address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment; and

(12) If the international application is filed through TEAS, an e-mail address for receipt of correspondence from the Office.

(b) For requirements for certification, see §7.13.

1902.02(a) Form of International Application

Trademark Rule 7.11(a), 37 C.F.R. 7.11(a), requires that an international application be filed either through the Trademark Electronic Application System ("TEAS"), or on the official paper form issued by the IB.

TEAS Form

TEAS will require the applicant to select between two different forms, a prepopulated form or a free-text form. The applicant should use the prepopulated form if: (1) the international application is based on a single basic application or registration; and (2) applicant's changes to the international application are limited to:

• Narrowing the list of goods or services;

• Changing the classification;

• Changing the applicant's address; and/or

• Attaching a color reproduction of the mark where the mark in the basic application or registration is in black and white with a color claim (see TMEP §1902.02(d)).

The prepopulated form will automatically display the exact information that is in the USPTO database for one specific U.S. serial number or registration number. However, if the international application is based on a newly filed application that has not yet been uploaded into the trademark database, the TEAS form will instruct the applicant to wait for the USPTO to upload the data or use the free-text form. It normally takes 48 to 72 hours for the USPTO to upload a newly filed application. To determine whether the basic application data has been entered, the applicant should check the TARR database on the USPTO website at: http://tarr.uspto.gov.

The free-text form should be used if an applicant wishes to change other data in the international application, or if the international application is based on more than one basic application or registration.

Paper Form

When filing on paper, applicants must submit the official international application form issued by the IB, the MM2 form, to the USPTO. The MM2 form is available on the IB website at http://www.wipo.int/madrid/en/. The IB will not accept paper applications that are not presented on the official IB form. The form cannot be handwritten. Article 3(1); Common Regs. 9(2)(a) and 11(4)(a)(i); Madrid Admin. Instr. §2(b). The applicant should complete the MM2 form online, print the completed form, and submit it to the USPTO by mail.

The completed paper application form must be mailed to the following address:

Commissioner for Trademarks

P.O. Box 16471
Arlington, VA 22215-1471
Attn: MPU

37 C.F.R. §§2.190(e) and 7.4(b). International applications may be delivered by hand or courier to the Trademark Assistance Center ("TAC"), at James Madison Building - East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:00 a.m. to 5:00 p.m., Eastern Standard Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. 7.4(c).

If an international application is mailed to the USPTO via the Express Mail Service of the United States Postal Service ("USPS"), the USPTO will deem that the application was received in the USPTO on the day it was deposited with the USPS, provided that the applicant complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. 2.198. See TMEP §305.03 regarding submission of documents by Express Mail. The certificate of mailing or transmission procedures of 37 C.F.R. 2.197 do not apply to international applications. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).

The IB's Guide to International Registration, Paras. B.II.07.01 - B.II.20.12 (2004) contains instructions for completing the international application form.

The applicant should include a self-addressed, stamped postcard with the international application. Upon receipt of the international application, the USPTO will place a control number and a label indicating the receipt date on the papers and return the postcard to the applicant. The applicant should reference the control number whenever contacting the USPTO about the application.

International applications cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(1).

1902.02(b) Basic Application or Registration Number

The international application must include the filing date and serial number of the basic application, or the registration date and registration number of the basic registration. 37 C.F.R. 7.11(a)(1). The USPTO will not certify the international application if this information is incorrect or is omitted.

The international application must be based on an active application or registration. It cannot be based on an abandoned application, or on a cancelled or expired registration.

1902.02(c) Name and Address of Applicant

Under Section 61 of the Trademark Act, only the owner of the basic application or registration can file an international application. 15 U.S.C. 1141a(a). The international application must include the name and current address of the applicant. The name of the applicant must be identical to the name of the applicant/registrant in the basic application or registration. 37 C.F.R. 7.11(a)(2).

On the prepopulated TEAS form, the applicant's name cannot be changed, so the international applicant's name will always be identical to the name of the owner of record for the basic application or registration.

When the applicant submits a paper form or a free-text TEAS form, an MPU paralegal will check the Trademark Reporting and Monitoring ("TRAM") System to verify that the name of the owner of the basic application or registration is identical to the name of the international applicant.

If the names are not identical, the MPU Paralegal will check the Assignment Services Division's database to determine whether an assignment or other document affecting title that is not reflected in TRAM has been recorded in the Assignment Services Division. If assignment records do not show a clear chain of title to the international applicant, the USPTO will notify the applicant that the application cannot be certified. If Assignment records do show a clear chain of title, the MPU Paralegal will update the ownership field in TRAM.

Because a delay in certifying and forwarding an international application to the IB may affect the date of the international registration, any request to record a change in ownership of a U.S. basic application or registration should be filed well in advance of the filing of the international application to allow sufficient processing time. The USPTO strongly recommends use of the Electronic Trademark Assignment System ("ETAS"), at http://etas.uspto.gov. Assignments filed electronically are recorded much faster than assignments filed on paper. If there is an unrecorded change in ownership, and the international applicant does not use ETAS to record the change, the USPTO may be unable to certify or forward the international application to the IB within two months after the application was received in the USPTO. In this situation, the date of the international registration will be the date of receipt of the application in the IB. See TMEP §1902.04.

Applicants can search the Assignment Services Division's database at http://assignments.uspto.gov/assignments/ to determine whether an assignment or other document of title has been recorded, and can search the TARR database at http://tarr.uspto.gov/, to determine whether the ownership information in the Trademark databases has been updated. See TMEP §§504 et seq. regarding automatic updating of ownership information in the TRAM and TARR databases.

If an international applicant is relying on an assignment (or other document transferring title) that has recently been filed for recordation but has not yet been recorded in the Assignment Services Division, the applicant should include a copy of the assignment with the international application.

1902.02(d) Reproduction (Drawing) of Mark

An international application must include a reproduction of the mark that (1) is the same as the mark in the basic application or registration; and (2) meets the requirements of 37 C.F.R. 2.52. 37 C.F.R. 7.11(a)(3).

For paper filers, the mark must appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide and must be placed in the box designated by the IB on the MM2 form. 37 C.F.R. §§2.52(d) and 2.54(b); Common Reg. 9(4)(a)(v); Guide to International Registration, Paras. B.II.14.01 et seq. (2004). For international applications filed electronically, an image of the mark taken from TRAM will appear automatically on the prepopulated TEAS form. If an applicant uses the free-text TEAS form, the applicant must type the mark in the appropriate field or attach a digitized image of the mark that meets the requirements of 37 C.F.R. 2.35(c).

Standard Character Reproductions. If the mark in the basic application or registration is in standard characters, the reproduction of the mark in the international application must be in standard characters. To claim standard characters, an applicant must check the appropriate box on the IB's official application form MM2, or on the TEAS form. The applicant may not claim standard characters in the international application unless the mark in the basic application or registration is in standard character (or typed) format. See TMEP §§807.03 et seq. for information about standard character drawings in applications for registration of marks in the United States. The USPTO's standard character chart is posted on the USPTO website at http://www.uspto.gov/teas/StandardCharacterSet.html.

Special Form Reproductions. If the mark in the basic application or registration is in special form, the reproduction of the mark in the international application must be in special form.

Use of Color. If the mark in the basic application or registration is depicted in black and white and does not include a color claim, the reproduction of the mark in the international application must be black and white. If the mark in the basic application or registration is in color, the reproduction of the mark in the international application must be in color. If the mark in the basic application or registration is depicted in black and white and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark that meet the requirements of 37 C.F.R. 2.52. 37 C.F.R. 7.11(a)(3); Common Reg. 9(4)(a)(vii). For example, if the basic application or registration includes a color claim and a black and white drawing that depicts the color by the use of color lining or by a statement describing the color, an applicant must include both a color reproduction of the mark and a black and white reproduction of the mark. See the note regarding color drawings in United States basic applications or registrations in TMEP §1902.02(e).

If filing on paper, the applicant must place the drawings in the appropriate boxes designated by the IB on the MM2 form. If using the TEAS prepopulated form, the black and white drawing will automatically prepopulate the form, and the applicant must attach the color reproduction of the mark. For the TEAS free-text form, however, the applicant must attach a digitized image of both the black and white reproduction of the mark and the color reproduction of the mark. See TMEP §§807 et seq. for general information about the requirements for drawings in applications for registration of marks in the United States.

1902.02(e) Color Claim

If color is claimed as a feature of the mark in the basic application and/or registration, the international application must include a statement that color is claimed as a feature of the mark and set forth the same name(s) of the color(s) claimed in the basic application and/or registration. 37 C.F.R. §§7.11(a)(4) and 7.12(a).

If the basic application or registration includes a black and white reproduction with a description of the mark indicating that color is used on the mark, or a reproduction that is lined for color (see Note below), the USPTO will presume that color is a feature of the mark, unless the basic application or registration includes a statement that "no claim is made to color" or "color is not a feature of the mark."

If color is not claimed as a feature of the mark in the basic application and/or registration, an applicant may not claim color as a feature of the mark in the international application. 37 C.F.R. 7.12(b).

Note Regarding Color Drawings in United States Basic Applications or Registrations: Prior to November 2, 2003, the USPTO did not accept color drawings. An applicant who wanted to show color in a mark had to submit a black and white drawing, with a statement identifying the color(s) and describing where they appeared in the mark. Alternatively, the applicant could submit a black and white drawing that showed color by using the USPTO's color lining chart (see TMEP §808.01(d)). The USPTO began accepting color drawings on November 2, 2003. Effective November 2, 2003, the Office no longer accepts black and white drawings with a color claim, or drawings that show color by use of lining patterns. 37 C.F.R. 2.52(b)(1).

1902.02(f) Identification of Goods/Services

An international application must include a list of goods/services that is identical to or narrower than the goods/services in the basic application or registration. 37 C.F.R. 7.11(a)(7). If the applicant makes any change that broadens the scope of the identification of goods/services, the USPTO will not certify the international application.

The prepopulated TEAS form will include the list of goods/services in the basic application or registration. An applicant may edit the list of goods/services by either deleting particular goods/services or revising the wording in the identification. On the MM2 paper form and the free-text TEAS form, the applicant must enter the goods/services manually and may omit goods or services, or revise the wording in the identification.

If the list of goods/services in an international application is not identical to the list of goods/services in the basic application or registration, the MPU paralegal must determine whether the applicant has identified any goods/services that are broader than the goods/services in the basic application or registration.

1902.02(g) Classification in International Applications

The goods/services should be classified according to the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("Nice Agreement"). 37 C.F.R. 7.11(a)(7). Both the prepopulated and the free-text TEAS forms will allow an applicant to change the classification of goods/services in an international application.

The MPU does not certify classification of the goods/services in an international application. Therefore, the owner of the United States application or registration does not have to classify the goods/services in the international application in the same class(es) in which they are classified in the United States basic application or registration. However, failure to properly classify goods or services in an international application according to the international classification system will result in an IB notice of irregularity. Because the final decision on the classification of the goods/services in an international application rests with the IB, the USPTO will not reclassify or give advice in response to specific inquiries regarding the reclassification of particular goods/services. The IB provides guidance on its website, currently at http://www.wipo.int/classifications/en/. See TMEP §1401.02(a) for further information about the international classes, and TMEP §§1902.07 et seq. for further information about irregularities in the international application.

1902.02(g)(i) Reclassifying Goods/Services

If the goods or services in the basic application or registration are classified in Classes A, B or 200 (which are not part of the international classification system) (see TMEP §1902.02(g)(ii)) , or are classified in other classes under the old U.S. classification system, it is advisable to reclassify the goods/services into international classes in the international application. Applicants using the prepopulated TEAS form will have to reclassify goods or services into international classes because the form does not recognize Classes A, B or 200.

In addition, if the identification of goods in the basic application or registration comprises kits or gift baskets (see TMEP §1902.02(g)(iii)) , it is advisable for the international applicant to either narrow the identification in order to classify the goods in a single international class, or pay additional fees for additional international classes.

In the situations discussed below, it is advisable for the international applicant to reclassify the goods/services in the international application, in order to avoid issuance of a notice of irregularity by the IB.

1902.02(g)(ii) U.S. Classes A, B & 200

Classes A, B & 200 are classes from the old U.S. classification system that are still used in the United States to classify certification marks for goods (Class A), certification marks for services (Class B) and collective membership marks (Class 200). These classes are not included in the International Classes under the Nice Agreement. Therefore, an international application based on a U.S. application or registration in U.S. Classes A, B or 200 should be reclassified. If the applicant does not reclassify its goods or services into the proper International Class, the IB will issue a notice of irregularity.

Amendment of the classification in the corresponding basic U.S. application or registration is not permitted.

U.S. Classes A & B

It has been the longstanding practice in the United States to accept identifications of goods or services for Classes A, B and 200 that are broader than those that would be accepted in applications for goods/services in other classes. TMEP §1306.06(f). In many situations, it will be difficult to reclassify these broad identifications into appropriate international classes. For example, a goods certification mark in U.S. Class A for "remanufactured, refurbished and reconditioned electrical equipment" could include goods in International Classes 7, 9 and/or 11, and possibly others. In such situations, the U.S. applicant should specify the type of electrical equipment that is being certified, and either apply and pay the fees for all appropriate classes, or limit the specification of "electric equipment" to cover goods in one class only.

In some certification mark applications/registrations, the goods/services will be easily classified in one class of the international classification system. For example, a services certification mark for "testing laboratory and calibration laboratory accreditation services" would be classified in International Class 42. However, it is important to be aware that multiple classes may be required when reclassifying goods/services from U.S. Classes A and B.

U.S. Class 200

Class 200 presents a similar problem and a similar solution. A broad identification of the subject organization in a collective membership mark application or registration is difficult to reclassify. For example, the wording "indicating membership in a conservative youth organization" is too broad and vague for classification in an international class. On the other hand, "indicating membership in an organization of consulting communications engineers" is easily classified in International Class 42. As with the certification marks, an applicant may have to clarify, specify, or narrow the description of the organization in the international application in order to classify the organization in an International Class.

1902.02(g)(iii) Kits, Gift Baskets

The USPTO policy regarding the identification and classification of kits and gift baskets differs from the policy of the IB regarding the classification of these goods.

The USPTO permits registration of a kit or gift basket in a single international class, even if the identification of goods lists items that are classified in other classes. The IB and most foreign countries will not accept an identification of goods in a particular class that includes a reference to goods that are classified in other classes. If an international application includes kits and gift baskets, and the identification of goods refers to items classified in more than one class, the IB is likely to issue a notice of irregularity requiring the applicant to separate the goods into their respective classes and to pay additional fees for added classes. To avoid issuance of a notice of irregularity by the IB, an international applicant may wish to either narrow the identification to refer only to items in a single international class, or submit additional fees for multiple international classes.

1902.02(h) List of Contracting Parties

An international application must list at least one Contracting Party (i.e., country or intergovernmental organization party to the Madrid Protocol) in which the applicant seeks an extension of protection of the international registration. 37 C.F.R. 7.11(a)(8). If the goods/services in the international application are not the same for all designated Contracting Parties, the application must include a list of the goods/services in the international application that pertain to each designated Contracting Party.

An international applicant designating the European Community for an extension of protection may claim seniority of one or more earlier registrations in or for a Member State of the European Community for the same mark covering the same goods or services in the international application. A claim of seniority must be presented on the IB's official form, MM17, and annexed to the international application. Common Reg. 9(g)(i). The USPTO does not have a TEAS form for a claim of seniority. Therefore, an applicant wishing to claim seniority should not submit an international application through TEAS. Instead, the applicant should complete both the MM2 and MM17 forms online, print the completed forms, and mail them to the USPTO.

An international applicant may not designate the United States as a Contracting Party. Section 65(b) of the Trademark Act, 15 U.S.C. 1141e(b); Article 3bis; TMEP §1904.01(h).

1902.02(i) Fees

USPTO Certification Fee. An international application must include the USPTO certification fee for each class of goods/services, or it will not be certified. The certification fee per class increases if the international application is based on more than one basic application or registration. 37 C.F.R. §§7.6(a) and 7.11(a)(9).

International Fees. Trademark Rule 7.11(a)(10) requires that if an international application is submitted through TEAS, the international fees for all classes and all designated Contracting Parties be paid at the time of submission. International fees for paper applications must be paid directly to the IB, and may be paid either before or after the international application is submitted to the USPTO. 37 C.F.R. 7.7(c). However, international fees paid after the IB receives the international application could result in a notice of irregularity issued by the IB (see TMEP §1902.07(b)(i)). Applicants filing on paper may submit a bank check for the international fees in Swiss francs made payable to the IB with the international application. If the international application meets the requirements for certification, the USPTO will forward the check with the international application to the IB. If the USPTO denies certification, the check will be returned with the international application to the applicant.

See also TMEP §1903.02 regarding payment of international fees.

1902.02(j) Statement of Entitlement

An international application must include a statement that the applicant is entitled to file an international application, specifying that the applicant: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States. Where an applicant's address is not in the United States, the applicant must provide the address of the U.S. domicile or establishment. Section 61 of the Trademark Act, 15 U.S.C. 1141a; 37 C.F.R. 7.11(a)(11).

For joint applicants, the application must include a statement of entitlement for each applicant.

1902.02(k) Description of Mark

If the basic application or registration includes a description of the mark, an international application must include the same description. 37 C.F.R. 7.11(a)(5). The applicant cannot include a description of the mark in the international application if the basic application or registration does not contain a description of the mark.

1902.02(l) Indication of Type of Mark

An international application must include an indication of the type of mark, if the mark in the basic application or registration is a three-dimensional mark, a sound mark, a collective mark, or a certification mark. 37 C.F.R. 7.11(a)(6).

1902.02(m) E-Mail Address

An international application must include an e-mail address for receipt of correspondence from the USPTO, if the international application is filed through TEAS. 37 C.F.R. 7.11(a)(12). Applicants submitting international applications on paper are encouraged to include an e-mail address on the form.