T.M.E.P. § 1904.02
Examination of Request for Extension of Protection to the United States

Executive summary:

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1904.02 Examination of Request for Extension of Protection to the United States

1904.02(a) Examined as Regular Application

Under Section 68(a) of the Trademark Act, 15 U.S.C. 1141h, a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register. It is unnecessary for the examining attorney to review the international registration on file at the IB, since the IB will forward all the necessary information with the request for extension of protection.

Except for 37 C.F.R. §§2.130-2.131, 2.160-2.166, 2.168, 2.173, 2.175, 2.181-2.186 and 2.197, all rules in 37 C.F.R. Part 2 apply to a request for extension of protection of an international registration to the United States, including sections related to proceedings before the Trademark Trial and Appeal Board, unless stated otherwise. All rules in 37 C.F.R. Part 10 also apply to requests for extension of protection. 37 C.F.R. 7.25(a).

1904.02(b) Examination of Identification and Classification of Goods/Services in §66(a) Applications

The examining attorney will examine the identification of goods/services in a §66(a) application according to the same standards of specificity used in examining applications under §1 and §44 of the Trademark Act, 15 U.S.C. §§1051 and 1126. Specifically, the examining attorney must follow the procedures set forth in the TMEP §and identify the goods/services in accordance with the USPTO's Manual of Acceptable Identification of Goods and Services ("USPTO ID Manual") whenever possible.

However, the international classification of goods/services in a §66(a) application cannot be changed from the classification given to the goods/services by the IB. Under Article 3(2), the IB controls classification. The §66(a) application (and any resulting registration) remains part of the international registration, and a change of classification in the United States would have no effect on the international registration. TMEP §1401.03(d).

If the IB's classification of goods/services in the §66(a) application is different from the classification set forth in the USPTO ID Manual, the examining attorney will not request an amendment of the classification. The goods/services cannot be moved to another class identified in the application.

Accordingly, if the mark in a §66(a) application appears to be a certification or collective membership mark, the USPTO will not reclassify it into U.S. Class A, B or 200. However, the applicant must comply with all other U.S. requirements for certification and collective membership marks, regardless of the classification chosen by the IB. See TMEP §§1304 et seq. and 1306 et seq.

1904.02(c) Mark Must Be Registrable on Principal Register

There is no provision in the Trademark Act for registration of a mark in a request for an extension of protection on the Supplemental Register. If the proposed mark is not registrable on the Principal Register, the extension of protection must be refused. Section 68(a)(4) of the Trademark Act, 15 U.S.C. 1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).

1904.02(d) Refusal Must Be Made Within 18 Months

Under §68(c) of the Trademark Act and Article 5 of the Protocol, the USPTO must notify the IB of any refusal entered in a §66(a) application within 18 months of the date the IB transmits the request for extension of protection to the USPTO. See TMEP §1904.03(a).

1904.02(e) Issuing Office Actions

The USPTO will send the first Office action in a §66(a) application to the IB. The first Office action is known as a provisional refusal and must be reviewed by the IB. If the provisional refusal meets the applicable requirements, (see TMEP §1904.03 et seq.), the IB will send it to the holder (i.e., the §66(a) applicant).

An examiner's amendment or a combined examiner's amendment/priority action (see TMEP §§707 et seq. and 708.05) may not be issued as a first Office action because the IB will not accept such amendments. Examiner's amendments and combined examiner's amendments/priority actions may be issued as second and subsequent actions.

The USPTO will send second and subsequent Office actions directly to the applicant, at the correspondence address set forth in the request for extension of protection to the United States, or to the correspondence address provided in a subsequent communication filed in the USPTO. See TMEP §1904.02(f) regarding applicant's correspondence address.

1904.02(f) Correspondence Address

The USPTO will send second and subsequent Office actions to the applicant's correspondence address of record. The USPTO will accept a notice of change of the correspondence address in a §66(a) application or a registered extension of protection to the United States, and will send correspondence to the new address. See TMEP §§603 et seq. regarding the procedures for establishing and changing the correspondence address in the USPTO.

An applicant should not use as its correspondence address the address of an attorney who is not qualified to practice before the USPTO in trademark cases under 37 C.F.R. 10.14(c). See TMEP §§602.03 , 603.05 and 1904.03(c).

A change of the correspondence address in the USPTO records will not affect the address of the holder's representative designated in the international registration, to which the IB sends correspondence. A request to record a change of the name or address of the representative designated in the international registration must be filed with the IB; it cannot be filed through the USPTO. See TMEP §1906.01(c). There are forms for changing the name or address of the representative on the IB website at http://www.wipo.int/madrid/en/. See Common Reg. 36(i).

1904.02(g) Mark Cannot Be Amended

The Madrid Protocol and the Common Regulations do not permit amendment of a mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. The IB's Guide to International Registration, Para. B.II.69.02 (2004), provides as follows:

[T]here is no provision for a mark that is recorded in the International Register to be amended in any way, either on renewal or at any other time. If the holder wishes to protect the mark in a form which differs, even slightly, from the mark as recorded, he must file a new international application. This is true even if the mark has been allowed to be changed in the basic application, the registration resulting from the basic application or the basic registration, as the case may be....

Accordingly, because an application under §66(a) is a request to extend protection of the mark in an international registration to the United States, the Trademark Rules of Practice make no provision for amendment of the mark in a §66(a) application, and the USPTO will not permit such amendments. See 37 C.F.R. 2.72; TMEP §807.13(b).

1904.02(h) Jurisdiction

The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act. 37 C.F.R. 2.84. However, when deciding whether to grant requests for jurisdiction of §66(a) applications, the Director must consider the time limits for notifying the IB of a refusal of a §66(a) application, set forth in Article 5(2) of the Protocol and §68(c) of the Trademark Act.