T.M.E.P. § 1902.03
Certification of International Application in USPTO
Executive summary:
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1902.03 Certification of International Application in USPTO
Under Section 62 of the Trademark Act, 15 U.S.C. 1141b, if the information contained in an international application corresponds to the information in the basic application or basic registration, the USPTO will certify the international application and forward it to the IB.
If an applicant uses the prepopulated TEAS form without changing any of the information (see TMEP §1902.02(a)) , the international application will be certified and forwarded to the IB without MPU review. In all other cases, an MPU paralegal must review the data in the international application before it can be certified.
Under Article 3(1) and Common Reg. 9(5)(d), the USPTO must sign the international application and certify:
- The date on which the USPTO received the international application;
- That the mark in the international application is the same as the mark in the basic application or registration;
- That the applicant is the same person or entity listed as the owner of the basic application or registration;
- That the goods/services identified in the international application are covered by the basic application or registration;
- That the applicant is qualified to file an international application under Section 61 of the Trademark Act and Article 2(1);
- That, if the international application includes a description of the mark, the description is consistent with the basic application or registration (Common Regs. 9(4)(a)(xi) and 9(5)(d)(iii));
- That, if the international application indicates that the mark is a color or combination of colors, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viibis) and 9(5)(d)(iii));
- That, if color is claimed as a feature of the mark in the basic application or registration, the same claim is included in the international application (Common Reg. 9(5)(d)(v));
- That, if the international application indicates that the mark is three-dimensional, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viii) and 9(5)(d)(iii));
- That, if the international application indicates that the mark is a sound mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(ix) and 9(5)(d)(iii));
- That, if the international application indicates that the mark is a collective or certification mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(x) and 9(5)(d)(iii)).
If the international application meets the requirements of 37 C.F.R. 7.11(a), the USPTO will certify the application and send it to the IB. 37 C.F.R. 7.13(a). The MPU will send a notice of certification to the applicant.
If the application does not meet the requirements of 37 C.F.R. 7.11(a), the USPTO will not certify the application, or forward it to the IB. The USPTO will notify the applicant of the reason(s) why the application cannot be certified. The USPTO will refund any international fees paid through TEAS. The USPTO certification fee will not be refunded. 37 C.F.R. 7.13(b).
An applicant should periodically check the status of the international application online using TARR. If the applicant does not receive a notice of certification or refusal within two months of filing, the applicant should contact the MPU. However, once an international application is certified and forwarded to the IB, questions concerning the international application should be directed to the IB. See TMEP §1906 for information on contacting the IB. The USPTO will update TARR when the IB issues a certificate of international registration or a notice of irregularity concerning the international application. See TMEP §1902.06 regarding the IB's examination of international registrations.
1902.03(a) Petition to Review Refusal to Certify
If an applicant believes that a refusal to certify an international application was erroneous, the applicant may file a petition to review the refusal. The petition should refer to the USPTO control number and include the petition fee required by 37 C.F.R. 2.6. If the denial of certification was due to USPTO error, the USPTO will grant the petition and refund the petition fee. See TMEP §Chapter 1700 for information about petitions.
The petition should be filed immediately. If the international application is not certified within two months of the date of receipt of the application in the USPTO, the date of registration will be affected. Article 3(4); Common Reg. 15. See TMEP §1902.04.
The petition should be mailed to:
Commissioner for Trademarks
P.O. Box 16471
Arlington, VA 22215-1471
Attn: MPU
37 C.F.R. §§2.190(e) and 7.4(b). If the applicant is paying the petition fee using a USPTO deposit account, the applicant may e-mail the request to madridpetitions@uspto.gov, with an authorization to charge the petition fee to a deposit account.
The applicant can also hand-deliver the petition to the Trademark Assistance Center 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).