T.M.E.P. § 1902.05
IB Requirements for Complete International Application.

Executive summary:

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1902.05 IB Requirements for Complete International Application.

The requirements for an international application are set forth in Article 3 and Common Reg. 9. If the application meets the minimum requirements set forth in 37 C.F.R. 7.11(a) (see TMEP §§1902.02 et seq.), the USPTO will certify the application and send it to the IB. The USPTO will not examine the international application to determine whether it is complete. Only the IB will examine it for completeness. The requirements for a complete international application originating from the United States are:

• Name and Address. The name and address of the applicant;

• Basic Application(s) or Registration(s). The serial number(s) and filing date(s) of the basic application(s), or the registration number(s) and registration date(s) of the basic registration(s). The international application may be based on more than one basic application or registration;

• Entitlement to File. An indication that the applicant (1) is a national of the United States; (2) is domiciled in the United States; or (3) has a real and effective industrial or commercial establishment in the United States (Common Reg. 9(5)(b));

• Fees. The international application must include the basic filing fee charged by the IB; the supplementary fee for each class of goods or services beyond 3 classes; the complementary fee for designation of each country to which extension of the international registration is sought; and the transmittal fee that the USPTO charges to process the international application. Articles 8(1) and 8(2); Common Regs. 9(4)(a)(xiv), 10(2) and 34.

• Goods/Services. A list of the goods or services on or in connection with which the applicant seeks international registration (Article 3(2); Common Reg. 9(4)(a)(xiii));

• Class. The international class of goods or services, if known (Article 3(2); Common Reg. 9(4)(a)(xiii));

• Contracting Parties. The names of the Contracting Party or Parties in which an applicant seeks protection (Common Reg. 9(4)(a)(xv));

• Declaration of Intent to Use. A verified statement that applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application, if any of the Contracting Parties designated in the international application require such a declaration (Common Reg. 9(5)(f)). Under Common Reg. 7(2), a Contracting Party may notify the IB that it requires a signed declaration of intention to use the mark.

• Reproduction (Drawing) of Mark. A clear reproduction of the mark that is no more than 8 cm high by 8 cm wide. Common Reg. 9(4)(a)(v). The mark must be the same as the mark in the basic application or registration. If the mark in the basic application or registration has color, the mark in the international application must be in color. If the mark in the basic application or registration is black and white, the mark in the international application must be in black and white7. If the mark in the basic application or registration is presented in black and white but contains a color claim, the applicant must submit both a black and white and a color reproduction. Common Reg. 9(4)(a)(vii);

• Color. If color is claimed as a distinctive feature of the mark in the basic application or registration, the international application must include an indication to that effect, and must set forth the name of the color(s) (Article 3(3); Common Reg. 9(4)(a)(vii)). If the mark in the basic application or registration consists of color(s), the international application must include a statement to that effect (Common Reg. 9(4)(a)(viibis));

• Transliteration. If the mark consists of or contains non-Latin characters or numerals other than Arabic or Roman numerals, a transliteration of that matter in Latin characters and Arabic numerals (Common Reg. 9(4)(a)(xii));

• Signature. The USPTO must sign the international application. The IB does not require the applicant's signature (Common Reg. 9(2)(b));

• Three-Dimensional Mark. If the mark is three-dimensional, the indication "three-dimensional mark" (Common Reg. 9(4)(a)(viii));

• Sound Mark. If the mark is a sound mark, the indication "sound mark" (Common Reg. 9(4)(a)(ix));

• Collective or Certification Mark. If the mark is a collective mark or a certification mark, an indication to that effect (Common Reg. 9(4)(a)(x));

• Standard Characters. If the applicant wishes that the mark be considered as a mark in standard characters, an indication to that effect (Common Reg. 9(4)(a)(vi));

• Description of Mark. If there is a description of the mark in the basic application or registration, the international application must include the same description. 37 C.F.R. 7.11(a)(5) and Common Reg. 9(4)(a)(xi).

• Language. International applications originating from the United States must be in English. 37 C.F.R. 7.3; Common Regs. 6(1)(b) and 6(2)(b)(iii).

• Indication of Second Language. If an applicant designates the European Community as a Contracting Party, applicant is required to indicate a second language, in addition to the language in the international application (Common Reg. 9(5)(g)(i)).

Additional Elements That May Be Included in International Application

The following elements may also be included, but are not mandatory under the Common Regulations:

• Translation. If the mark consists of or contains non-English wording, an English translation (Common Reg. 9(4)(b)(iii));

• Citizenship/State of Incorporation or Organization (Common Regs. 9(4)(b)(i) and (ii)). The citizenship of the applicant(s); or if the applicant is a juristic person, the state or nation under the laws of which the applicant is organized;

• Disclaimer. If an applicant wishes to disclaim any element of the mark, the applicant may do so (Common Reg. 9(4)(b)(v));

• Representative. See TMEP §1902.11 ;

• Priority. An international applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if: (1) the international application contains a claim of priority; and (2) the filing date of the application that forms the basis of the priority claim (within the meaning of Article 4 of the Paris Convention) was not more than six months before the date of the international registration. Madrid Protocol Article 4(2) and Common Reg. 9(4)(a)(iv). The applicant must specify the serial number (if available), filing date and country of the earlier filing. If the earlier filing does not relate to all the goods/services listed in the international application, the applicant must set forth the goods/services to which it does relate. NOTE For Paper Filers: If the applicant is claiming priority based upon the basic application, the applicant should list the U.S. application serial number and filing date in both Box 5 (Basic Application Section) and Box 6 (Priority Claimed Section) of the MM2 international application form.

• 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 covering the same goods or services in the international application by indicating the following four elements: (1) each Member State in or for which the earlier mark is registered; (2) the date from which the registration was effective; (3) the registration number; and (4) the goods/services covered by the earlier registration (Common Reg. 9(5)(g)(i)). The information must be submitted on the IB's official MM17 form. The MM17 form should be annexed to the international application form.