1902.02(a) Form of International Application
Trademark Rule 7.11(a), 37 C.F.R. §7.11(a), requires that an international application be filed either through the Trademark Electronic Application System ("TEAS"), or on the official paper form issued by the IB.
TEAS will require the applicant to select between two different forms, a prepopulated form or a free-text form. The applicant should use the prepopulated form if: (1) the international application is based on a single basic application or registration; and (2) applicant’s changes to the international application are limited to:
- Narrowing the list of goods or services;
- Changing the classification;
- Changing the applicant’s address; and/or
- Attaching a color reproduction of the mark where the mark in the basic application or registration is in black and white with a color claim ( see TMEP §§1902.02(d) and 1902.02(e)).
The prepopulated form will automatically display the exact information that is in the Trademark database for one specific U.S. serial number or registration number. However, if the international application is based on a newly filed application that has not yet been uploaded into the USPTO’s automated records, the TEAS form will instruct the applicant to either wait for the USPTO to upload the data or use the free-text form. It normally takes 48 to 72 hours for the USPTO to upload a newly filed application. To determine whether the basic application data has been entered, the applicant should check the Trademark Status and Document Retrieval ("TSDR") database on the USPTO website at http://tsdr.uspto.gov/.
The applicant should use the free-text form if the applicant wishes to change other data in the international application, or if the international application is based on more than one basic application and/or registration.
When filing on paper, applicants must submit the official international application form issued by the IB, the MM2 form, to the USPTO. This form is available on the IB website at http://www.wipo.int/madrid/en/. The IB will not accept paper applications that are not presented on the official IB form. Article 3(1); Common Regs. 9(2)(a) and 11(4)(a)(i); Madrid Admin. Instr. §2. The form cannot be handwritten. Madrid Admin. Instr. §6(a). The applicant should complete the MM2 form online, print the completed form, and submit it to the USPTO by mail.
The applicant may mail the completed paper application form to the following address, using the First Class Mail Service of the United States Postal Service ("USPS"):
Madrid Processing Unit
600 Dulany Street
37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, the international applicant may deliver the application by hand or courier to the Trademark Assistance Center ("TAC"), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. 37 C.F.R. §7.4(c). TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
If an international application is mailed to the USPTO via the Priority Mail Express® Service of the USPS, the USPTO will deem that the application was received in the USPTO on the day it was deposited with the USPS, provided that the applicant complies with the requirements of 37 C.F.R. §2.198 for correspondence sent by Priority Mail Express®. See TMEP §305.03 regarding Priority Mail Express®. The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 do not apply to international applications. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).
The IB’s Guide to International Registration contains instructions for completing the international application form.
The applicant should include a self-addressed, stamped postcard with the international application. Upon receipt of the international application, the USPTO will place a control number and a label indicating the receipt date on the documents and return the postcard to the applicant. The applicant should reference the control number whenever contacting the USPTO about the application.
International applications cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(1).