T.M.E.P. § 1902.09
Dependence & "Central Attack": Restriction, Abandonment, Cancellation or Expiration of Basic Applica

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§1902.08) | Next Section (§1902.10)

1902.09 Dependence & "Central Attack": Restriction, Abandonment, Cancellation or Expiration of Basic Application or Registration During First 5 Years

For a period of 5 years from the date of the international registration, the registration is dependent on the basic application or basic registration. Article 6(3). Under §63 of the Trademark Act, 15 U.S.C. 1141c, and Article 6(4), the USPTO must notify the IB if the basic application or registration is restricted, abandoned, cancelled, or expired, with respect to some or all of the goods/services listed in the international registration:

(1) Within five years after the international registration date; or

(2) More than five years after the international registration date if the restriction, abandonment, or cancellation of the basic application or basic registration resulted from an action that began before the end of the five-year period.

The IB will cancel (or restrict) the international registration accordingly. Article 6(4); Common Reg. 22(2)(b). This is sometimes called "central attack."

The USPTO must notify the IB if there is an appeal, opposition or cancellation proceeding (or a court proceeding, if the USPTO is aware of the proceeding) pending at the end of the five-year period. The USPTO must notify the IB of the final decision once the proceeding is concluded. Common Regs. 22(1)(b) and (c). The IB will record this notice in the International Register and notify the holder and the designated Contracting Parties.

In view of the above notification requirements, applicants and registrants are encouraged to exercise diligence in monitoring the status of their basic application or basic registration (see TMEP §1705.05). Once the IB cancels or restricts an international registration, it cannot be reinstated. If a problem arises with the basic application or registration or a status inquiry reveals that the basic application or registration has become improperly abandoned or cancelled, the applicant or registrant should promptly take corrective action. See TMEP §1712 for information regarding reinstatement of abandoned applications and cancelled registrations; and TMEP §1714 regarding petitions to revive abandoned applications.