BitLaw

Chapter 1900: Madrid Protocol

1901: Overview of the Madrid System of International Registration

1902: International Application Originating from the United States

1902.01: Who Can File

1902.02: Minimum Requirements for Date of Receipt of International Application in USPTO

1902.02(a): Form of International Application

1902.02(b): Basic Application or Registration Number

1902.02(c): Name and Address of Applicant

1902.02(d): Reproduction (Drawing) of Mark

1902.02(e): Color Claim

1902.02(f): Identification of Goods/Services

1902.02(f)(i): House Marks and "Full Line of …"

1902.02(f)(ii): Providing a Website/Online Portal

1902.02(g): Classification in International Applications

1902.02(g)(i): Reclassifying Goods/Services

1902.02(g)(ii): United States Classes A, B, and 200

1902.02(g)(iii): Kits and Gift Baskets

1902.02(h): List of Contracting Parties

1902.02(i): Fees

1902.02(j): Statement of Entitlement

1902.02(k): Description of Mark

1902.02(l): Indication of Type of Mark

1902.02(m): E-Mail Address

1902.03: Certification of International Application by USPTO

1902.03(a): Petition to Review Refusal to Certify

1902.04: Date of International Registration

1902.05: IB Requirements for Complete International Application

1902.06: Examination of Application by IB

1902.07: Irregularities in International Application

1902.07(a): Irregularities that Must Be Remedied by the USPTO

1902.07(b): Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Directly to the IB

1902.07(b)(i): Fee Irregularities

1902.07(c): Irregularities that Must Be Remedied by the Applicant – Applicant Must Respond Through the USPTO

1902.07(c)(i): Classification of Goods/Services

1902.07(c)(ii): Identification (Indication) of Goods/Services

1902.07(d): Other Irregularities that Must Be Remedied by Applicant – Applicant May Respond Directly to the IB or Through the USPTO

1902.07(e): Filing Response Directly With the IB

1902.07(f): Responding to Notice of Irregularity Through the USPTO

1902.08: Subsequent Designation - Request for Extension of Protection Subsequent to International Registration

1902.08(a): USPTO Requirements

1902.08(b): Form for Filing Subsequent Designation Through the USPTO

1902.08(c): Fees for Subsequent Designation

1902.08(d): IB Requirements for Subsequent Designation

1902.08(e): Irregularities in Subsequent Designation

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

1902.10: Transformation When the USPTO Is the Office of Origin

1902.11: Representative

1902.12: USPTO Must Notify IB of Division or Merger of Basic Application or Registration

1903: Payment of Fees

1903.01: Payment of USPTO Fees

1903.02: Payment of International Fees

1904: Request for Extension of Protection of International Registration to the United States

1904.01: Filing Request for Extension of Protection to United States

1904.01(a): Section 66(a) Basis

1904.01(b): Filing Date

1904.01(c): Declaration of Intent to Use Required

1904.01(d): Use Not Required

1904.01(e): Priority

1904.01(f): Filing Fee

1904.01(g): Constructive Use

1904.01(h): May Not be Based on USPTO Basic Application or Registration

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

1904.02(a): Examined as Regular Application on the Principal Register 

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

1904.02(c): Examination of Identification of Goods/Services in §66(a) Applications

1904.02(c)(i): Acceptable Identifications of Goods/Services

1904.02(c)(ii): Indefinite Identification of Goods/Services with Acceptable Options Within the Scope of the Class

1904.02(c)(iii): Indefinite Identification of Goods/Services that Does Not Include Any Goods/Services Within the Class

1904.02(c)(iv): Examination of Proposed Amendments and Issuance of Final Requirements for an Acceptable Identification

1904.02(c)(v): Effect of Indicated Classes – No Precedential Value on Later-Filed Applications

1904.02(d): Examination Issues Specific to Certification and Collective Marks

1904.02(e): Corrections to an International Registration

1904.02(e)(i): Corrections to Goods/Services/Classes

1904.02(f): Restrictions to Goods/Services

1904.02(f)(i): Limitations to Goods/Services

1904.02(f)(ii): Limitations vs. Amendments to Goods and Services

1904.02(f)(iii): Partial Cancellation of an International Registration

1904.02(f)(iv): Partial Ceasing of Effect of a Basic Application/Registration

1904.02(g): Refusal Must Be Made Within 18 Months

1904.02(h): Office Actions and Responses 

1904.02(i): Correspondence Address

1904.02(j): Mark May Not Be Amended

1904.02(k): Drawings and Descriptions of the Mark

1904.02(l): Jurisdiction

1904.03: Notice of Refusal

1904.03(a): Notice Must Be Sent Within 18 Months

1904.03(b): Requirements for Notice of Refusal

1904.03(c): §66(a) Applicant Must Respond to Notification of Refusal

1904.03(d): Refusal Pertaining to Less than All the Goods/Services

1904.03(e): Confirmation or Withdrawal of Provisional Refusal

1904.03(f): Notification of Correction in the International Register with Respect to a Pending Request for Extension of Protection

1904.03(g): Notification of Restrictions to Goods/Services with Respect to a Pending Request for Extension of Protection

1904.03(g)(i): Limitations to Goods/Services

1904.03(g)(ii): Partial Cancellation of an International Registration

1904.03(g)(iii): Partial Ceasing of Effect of a Basic Mark

1904.04: Opposition

1904.05: Certificate of Extension of Protection

1904.06: Assignment of Extension of Protection to the United States

1904.07: Invalidation of Protection in United States

1904.07(a): Invalidation Resulting From Cancellation Due to Third-Party Challenge

1904.07(b): Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration

1904.07(c): Invalidation Resulting From Voluntary Surrender of Registered Extension of Protection

1904.07(d): Issuance of Notice of Invalidation to the International Bureau

1904.08: Cancellation of International Registration by IB

1904.09: Transformation to Application Under §1 or §44

1904.09(a): Requirements for Transformation

1904.09(b): Examination of Transformed Application

1904.10: Affidavits of Use or Excusable Nonuse Required

1904.11: Incontestability

1904.12: Replacement

1904.13: Amendment and Correction of Registered Extension of Protection to the United States

1904.13(a): Limited Amendments to Registered Extension of Protection

1904.13(b): Corrections to Registered Extensions of Protection

1904.14: Notification of Correction in the International Register with Respect to Registered Extension of Protection

1904.15: Notification of Restrictions to Goods/Services with Respect to a Registered Extension of Protection

1904.15(a): Limitations to Goods/Services

1904.15(b): Partial Cancellation of an International Registration

1904.15(c): Partial Ceasing of Effect of an International Registration

1905: Renewal of International Registrations

1906: Communications with International Bureau Regarding International Registrations

1906.01: Recording Changes in International Register

1906.01(a): Change in Ownership of International Registration

1906.01(a)(i): Requirements for Submitting Changes in Ownership of International Registration Through the USPTO

1906.01(a)(ii): International Fees for Recording Changes of Ownership of International Registration

1906.01(a)(iii): Effect of Change of Ownership of International Registration

1906.01(a)(iv): Dividing an International Registration After Change of Ownership with Respect to Some but Not All of the Goods/Services

1906.01(b): Restriction of Holder’s Rights of Disposal

1906.01(c): Change of the Holder’s Name or Address

1906.01(d): Change of Name or Address of Representative

1906.01(e): Limitation, Cancellation, or Renunciation of an International Registration

1906.01(f): Correction of Errors in International Registration

1906.01(g): Merger of International Registrations

1906.01(h): License

1906.01(i): Changes that Cannot Be Made to International Registration