T.M.E.P. § 1902.08
Subsequent Designation - Request for Extension of Protection Subsequent to International Registratio

Executive summary:

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1902.08 Subsequent Designation - Request for Extension of Protection Subsequent to International Registration

A subsequent designation is a request by the holder of an international registration for an extension of protection of the international registration to Contracting Parties made after the IB registers the mark. The requirements for a subsequent designation are set forth in Article 3ter(2) and Common Reg. 24. The holder may file the subsequent designation directly with the IB. There is a form for filing a subsequent designation on the IB website at http://www.wipo.int/madrid/en/.

A holder may file a subsequent designation through the USPTO if (1) the international registration is based on a basic application filed with the USPTO or a basic registration issued by the USPTO, and (2) the holder is a national of, is domiciled in, or has a real and effective business or commercial establishment in the United States. Section 64 of the Trademark Act, 15 U.S.C. 1141d; 37 C.F.R. 7.21(a).

1902.08(a) USPTO Requirements

The minimum requirements for a date of receipt of a subsequent designation in the USPTO are set forth in 37 C.F.R. 7.21(b), and are reproduced below:

• The international registration number;

• The name and address of the holder of the international registration;

• A statement that the holder is entitled to file a subsequent designation through the USPTO, specifying that the holder: (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. If a holder's address is not in the United States, the holder must provide the address of its U.S. domicile or establishment;

• A list of goods/services that is identical to or narrower than the goods/services in the international registration;

• A list of the Contracting Parties designated for an extension of protection;

• The USPTO transmittal fee;

• The international fees required by the IB, if the subsequent designation is filed through TEAS; and

• An e-mail address for receipt of correspondence from the USPTO, if the subsequent designation is filed through TEAS.

See TMEP §1902.08(b) regarding the form for filing a subsequent designation through the USPTO, and TMEP §1902.08(c) regarding the international fees for a subsequent designation.

The USPTO does not certify subsequent designations. If a subsequent designation meets the requirements set forth in 37 C.F.R. 7.21(b), the USPTO will forward it to the IB. 37 C.F.R. 7.21(c). If the subsequent designation does not meet these requirements, the USPTO will not forward the subsequent designation, and will notify the holder of the reasons. The USPTO transmittal fee is nonrefundable. 37 C.F.R. 7.21(d).

If the subsequent designation meets the requirements of Common Reg. 24, the IB will record it and notify both the USPTO and the holder of the recordation. Common Reg. 24(7). The subsequent designation will bear the date of receipt in the USPTO, provided that the IB receives it within two months of that date. If the IB does not receive the subsequent designation within two months of the date of receipt in the USPTO, the subsequent designation will bear the date of receipt in the IB. Common Reg. 24(6)(b).

1902.08(b) Form for Filing Subsequent Designation Through the United States Patent and Trademark Office

Under Trademark Rule 7.21(b), 37 C.F.R. 7.21(b), the holder of an international registration submitting a subsequent designation through the USPTO may file either through TEAS or on the official paper form issued by the IB.

When filing through TEAS, the holder must enter the required information in the data fields of the free-text TEAS form. Holders filing subsequent designations on paper through the USPTO should use the official IB form MM4 posted 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 3ter(2); Common Reg. 24(2)(b); Madrid Admin. Instr. §3(b). The holder should complete the MM4 form online, print the completed form, and submit it to the USPTO via mail, hand delivery or courier service.

The IB's Guide to International Registrations, available on the IB's website at: http://www.wipo.int/madrid/en, contains instructions for completing the subsequent designation form, at B.II.43.01-44.03.

Once the subsequent designation form is completed, it may be mailed to the USPTO at 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). Subsequent designations may also be delivered by hand or courier 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).

If a subsequent designation is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the subsequent designation was submitted on the day it was deposited as Express Mail, provided that the holder complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. 2.198. See TMEP §305.03 regarding the requirements for submission of documents by Express Mail. The certificate of mailing or transmission procedures of 37 C.F.R. 2.197 do not apply to subsequent designations. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).

With a paper-filed subsequent designation, a holder should include a self-addressed, stamped postcard. Upon receipt of the subsequent designation, the USPTO will place a label indicating the receipt date on the papers and return the postcard to the holder.

Subsequent designations cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(2).

1902.08(c) Fees for Subsequent Designation

USPTO Transmittal Fee. The subsequent designation must include the USPTO transmittal fee, or the USPTO will not forward it to the IB. 37 C.F.R. 7.21(a)(7).

International Fees. Trademark Rule 7.21(a)(8) requires that if the subsequent designation is filed through TEAS, all international fees for the subsequent designation must be paid at the time of submission. International fees for subsequent designations filed on paper must be paid directly to the IB in Swiss currency, either before or after submission of the subsequent designation. However, international fees paid after the IB receives the subsequent designation could result in a notice of irregularity issued by the IB. Holders may submit a bank check for international fees in Swiss francs made payable to the IB when submitting the subsequent designation on paper to the USPTO. The USPTO will forward the check with the subsequent designation to the IB.

See TMEP §1903.02 regarding payment of international fees.

1902.08(d) IB Requirements for Subsequent Designation

The subsequent designation requirements are set forth in Article 3ter and Common Reg. 24. If the subsequent designation meets the minimum requirements for a date of receipt set forth in 37 C.F.R. 7.21(b) (see TMEP §1902.08(a)) , the USPTO will forward the subsequent designation to the IB. The USPTO will not examine it to determine whether it is complete. The IB will examine it for completeness.

If the subsequent designation meets the applicable requirements, the IB will record it in the International Register and notify the holder, the Offices of the designated Contracting Parties and the USPTO, if the subsequent designation was submitted through the USPTO. Common Reg. 24(8).

1902.08(e) Irregularities in Subsequent Designation

If a subsequent designation is sent to the IB through the USPTO, the IB will notify both the holder and the USPTO of any irregularity. Common Reg. 24(5)(a). Corrections of any irregularity in a subsequent designation must be sent directly to the IB, even if the subsequent designation was sent through the USPTO. 37 C.F.R. 7.21(e). The USPTO will make note of the notice of irregularity in its automated records, but will not take any other action.