TMEP 1902.02(h): List of Contracting Parties

This is the October 2015 Edition of the TMEP

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1902.02(h)    List of Contracting Parties

An international application must list at least one Contracting Party (i.e., country or intergovernmental organization party to the Madrid Protocol) to which the applicant seeks an extension of protection of the international registration. If the goods/services in the international application are not the same for all designated Contracting Parties, the application must include a list of the goods/services in the international application that pertain to each designated Contracting Party. 37 C.F.R. §7.11(a)(8).

An international applicant designating the European Community for an extension of protection may claim seniority of one or more earlier registrations in or for a Member State of the European Community for the same mark covering the same goods or services in the international application. Common Reg. 9(5)(g)(i). See TMEP §1902.05 for further information about “seniority.”

For international applications filed through TEAS, the online form enables applicants designating the European Community to claim seniority based upon registrations issued by Member States. The applicant must indicate: (1) the name of the Member State in or for which the earlier mark is registered; (2) the date from which the registration was effective; (3) the registration number; and (4) the goods and/or services covered by the earlier registration. Common Reg. 9(5)(g)(i).

For international applications filed on paper using form MM2, a claim of seniority must be presented on the IB’s official form, MM17, and annexed to the international application. Common Reg. 9(5)(g)(i). The applicant must complete both the MM2 and the MM17 forms, and mail them to the USPTO.      

An international applicant may not designate the United States as a Contracting Party. 15 U.S.C. §1141e(b); Article 3bis; TMEP §1904.01(h).