T.M.E.P. § 1904.06
Assignment of Extension of Protection to the United States

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 (§1904.05) | Next Section (§1904.07)

1904.06 Assignment of Extension of Protection to the United States

Under §72 of the Trademark Act, 15 U.S.C. 1141l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).

Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB. A holder or assignee cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Services Division of the USPTO. The USPTO will record only those assignments (or other documents transferring title) that have been recorded in the International Register. The IB will notify the USPTO of any changes in ownership recorded in the International Register, and the USPTO will automatically update the trademark database and the assignment database to reflect the change(s). See TMEP §501.07.

See TMEP §§1906.01 and 1906.01(a) regarding requests to record a change of ownership in the International Register.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of international registrations or extensions of protection to the United States. 37 C.F.R. 7.22.