T.M.E.P. § 1904.09
Transformation to Application Under ¤1 or ¤44
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.
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1904.09 Transformation to Application Under §1 or §44
An international registration is dependent on the basic application and/or basic registration for five years after the date of the international registration. Article 6(3). If the basic application or registration is restricted, abandoned, cancelled, or expired with respect to some or all of the goods or services listed in the international registration, the Office of Origin will notify the IB, and the IB will cancel (or restrict) the international registration and notify the USPTO. Article 6(4). See TMEP §1902.09. The USPTO will cancel, in whole or in part, the corresponding registered extension of protection (or request for extension of protection) of the international registration to the United States.
In this situation, the holder of the international registration may "transform" the cancelled registered extension of protection (or request for extension of protection) into an application under §1 or §44 of the Trademark Act for registration of the same mark for any or all of the cancelled goods/services that were covered by the extension of protection. 15 U.S.C. 1141j; Article 9quinquies.
1904.09(a) Requirements for Transformation
A request for transformation must be filed within three months after the date on which the international registration was cancelled, in whole or in part. Article 9quinquies(i); Section 70(c) of the Trademark Act. The request must include:
(1) The serial number or registration number of the extension of protection to the United States;
(2) The name and address of the holder of the international registration;
(3) The domestic application filing fee required by 37 C.F.R. 2.6(a)(1) for at least one class of goods or services; and
(4) An e-mail address for receipt of correspondence from the USPTO.
The holder must file the request for transformation directly with the USPTO, which will be examined as a domestic application.
Under §70(c) of the Trademark Act and Article 9quinquies, transformation may take place only if the international registration is cancelled or restricted at the request of the Office of Origin under Article 6(4), due to the cancellation of the basic application and/or registration. It is not available if the international registration expires for failure to renew, is cancelled or restricted at the request of the holder, or is cancelled or restricted for any other reason.
The request for transformation should be mailed to 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). The request may also be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building - East Wing, 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). The certificate of mailing or transmission procedures of 37 C.F.R. 2.197 and Express Mail provisions of 37 C.F.R. 2.198 do not apply to requests for transformation. 37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2) and 7.4(e).
Requests for transformation cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(6).
1904.09(b) Examination of Transformed Application
A "transformed" application under §1 or §44 of the Trademark Act resulting from the transformation of a cancelled extension of protection must comply with all the requirements of the Trademark Act and Trademark Rules of Practice. 37 C.F.R. 7.31(c). The USPTO will assign a new serial number, and will link the prosecution history of the cancelled extension of protection to the new "transformed" application.
The USPTO will treat the "transformed" application as if it had been filed on (1) the international registration date, if the request for extension of protection to the United States was made in the international application, or (2) the date of recordal of the subsequent designation with the IB, if the request for extension of protection to the United States was made in a subsequent designation. If the extension of protection was entitled to priority under §67 of the Trademark Act, the new application is entitled to the same priority.
If an examining attorney has already performed a search for conflicting marks, he or she does not have to conduct a new search, since the effective filing date will not change.
The examining attorney should inquire as to whether the holder seeks registration for all of the goods/services that were covered by the cancelled extension of protection.
Even if the mark in the extension of protection was already published or registered, republication will be required.
Generally, in examining a "transformed" application where the extension of protection was published or registered, the Office will only issue requirements or refusals related to the new §1 or §44 basis. However, in some cases, where a significant length of time has elapsed since the initial examination of the request for extension of protection, refusal of registration may be appropriate due to changed circumstances. For example, the mark may have become descriptive or generic as applied to the goods or services.