37 CFR 7.21: Subsequent designation

Taken from the USPTO's TM Federal Statutes and Rules, Last Revised in January 2018

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§7.21    Subsequent designation.

  • (a) A subsequent designation may be filed directly with the International Bureau, or, if it meets the requirements of paragraph (b) of this section, submitted through the Office.
  • (b) The Office will grant a date of receipt to a subsequent designation that is either filed through TEAS, or typed on the official paper form issued by the International Bureau. The subsequent designation must contain all of the following:
    • (1) The international registration number;
    • (2) The serial number of the U.S. application or registration number of the U.S. registration that formed the basis of the international registration;
    • (3) The name and address of the holder of the international registration;
    • (4) A statement that the holder is entitled to file a subsequent designation in the Office, specifying that holder: is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where a holder’s address is not in the United States, the holder must provide the address of its U.S. domicile or establishment;
    • (5) A list of goods and/or services that is identical to or narrower than the list of goods and/or services in the international registration;
    • (6) A list of the designated Contracting Parties. If the goods and/or services in the subsequent designation are not the same for each designated Contracting Party, the holder must list the goods and/or services covered by the subsequent designation that pertain to each designated Contracting Party;
    • (7) The U.S. transmittal fee required by § 7.6;
    • (8) If the subsequent designation is filed through TEAS, the subsequent designation fees (see § 7.7); and
    • (9) If the subsequent designation is filed through TEAS, an e-mail address for receipt of correspondence from the Office.
  • (c) If the subsequent designation is accorded a date of receipt, the Office will then forward the subsequent designation to the International Bureau.
  • (d) If the subsequent designation fails to contain all the elements set forth in paragraph (b) of this section, the Office will not forward the subsequent designation to the International Bureau. The Office will notify the holder of the reason(s). If the holder paid the subsequent designation fees (see § 7.7) through the Office, the Office will refund the subsequent designation fees. The Office will not refund the transmittal fee.
  • (e) Correspondence to correct any irregularities in a subsequent designation must be made directly with the International Bureau.

[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, effective Oct. 4, 2004]