TMEP 1902.03: Certification of International Application by USPTO

This is the October 2015 Edition of the TMEP

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1902.03    Certification of International Application by USPTO

If the information contained in an international application corresponds to the information in the basic application or basic registration, the USPTO will certify the international application and forward it to the IB. 15 U.S.C. §1141b.

If an applicant uses the prepopulated TEAS form without changing any of the information (see TMEP §1902.02(a)), the international application will be certified and forwarded to the IB without review by the MPU. In all other cases, an MPU trademark specialist must review the data in the international application to determine whether such data corresponds to the basic application or basic registration.

Under Article 3(1) and Common Reg. 9(5)(d), the USPTO must sign the international application and certify:

  • The date on which the USPTO received the international application (Common Reg. 9(5)(d)(i));
  • That the mark in the international application is the same as the mark in the basic application or registration (Common Reg. 9(5)(d)(iv));
  • That the applicant is the same person or entity listed as the owner of the basic application or registration (Common Reg. 9(5)(d)(ii));
  • That the goods/services identified in the international application are covered by the basic application or registration (Common Reg. 9(5)(d)(vi));
  • That the applicant is qualified to file an international application under §61 of the Trademark Act and Article 2(1);
  • That, if the international application includes a description of the mark, the description is consistent with the basic application or registration (Common Regs. 9(4)(a)(xi) and 9(5)(d)(iii));
  • That, if the international application indicates that the mark consists of a color or combination of colors, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viibis) and 9(5)(d)(iii));
  • That, if color is claimed as a feature of the mark in the basic application or registration, the same claim is included in the international application (Common Reg. 9(5)(d)(v));
  • That, if the international application indicates that the mark is three‑dimensional, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(viii) and 9(5)(d)(iii));
  • That, if the international application indicates that the mark is a sound mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(ix) and 9(5)(d)(iii));
  • That, if the international application indicates that the mark is a collective or certification mark, this indication is consistent with the basic application or registration (Common Regs. 9(4)(a)(x) and 9(5)(d)(iii)).

If the international application meets the requirements of 37 C.F.R. §7.11(a), the USPTO will certify the application and send it to the IB. 37 C.F.R. §7.13(a). The MPU will send a notice of certification to the applicant.

If the application does not meet the requirements of 37 C.F.R. §7.11(a), the USPTO will not certify the application or forward it to the IB. The USPTO will notify the applicant of the reason(s) why the application cannot be certified. The USPTO will refund any international fees paid through TEAS. The USPTO certification fee will not be refunded. 37 C.F.R. §7.13(b).

An applicant should periodically check the status of the international application online, using TSDR. If the applicant does not receive a notice of certification or refusal within two months of filing, the applicant should contact the MPU. However, once an international application is certified and forwarded to the IB, questions concerning the international application should be directed to the IB rather than the USPTO. See TMEP §1906 for information on contacting the IB. The USPTO will update TSDR when the IB issues a certificate of international registration or a notice of irregularity concerning the international application. See TMEP §1902.06 regarding the IB’s examination of international registrations.