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

October 2017 Edition of the TMEP

Previous: §1902.07(e) | Next: §1902.08

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

Under Trademark Rule 7.14(e), 37 C.F.R. §7.14(e), an applicant may file a response to an IB notice of irregularity through the USPTO for forwarding to the IB before the IB’s response deadline.  The response may be filed electronically or on paper. However, receipt in the USPTO does not fulfill the requirement that the response be received by the IB before the IB response deadline.  Therefore, applicants should submit responses to the USPTO as soon as possible, and at least one month before the end of the IB response period.  The USPTO will not process any response received after the IB response deadline.

The IB does not have a form for responses to irregularity notices.  Applicants are strongly encouraged to use the TEAS form for responses to notices of irregularity.  Applicants submitting paper responses to the USPTO for forwarding to the IB should include with the response: (1) the USPTO control number (U.S. Reference No.) assigned to the international application; and (2) a copy of the IB’s irregularity notice.  The applicant may include a self-addressed, stamped postcard with the response.  Upon receipt, the USPTO will place a label indicating the receipt date on the documents, and return the postcard to the applicant.  However, to be considered timely, the response must be received by the IB before the end of the response period set forth in the IB’s notice, and receipt in the USPTO does not fulfill the IB deadline requirement.

Applicants submitting responses on paper should mail the document to the following address, using the First Class Service of the USPS:

Madrid Processing Unit

600 Dulany Street

Alexandria

Virginia

22314-5793

37 C.F.R. §§2.190(e) and 7.4(b).  Alternatively, the response may be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention:  MPU.  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. 37 C.F.R. §7.4(c).  The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 and Priority Mail Express® provisions of 37 C.F.R. §2.198 do not apply to responses to notices of irregularity. 37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2), and 7.4(e).

Please note that fees for correcting irregularities in an international application must be paid directly to the IB in Swiss currency, even if the applicant is filing a response to correct irregularities through the USPTO. 37 C.F.R. §7.14(c).  See TMEP §1903.02 for further information about the payment of fees to the IB.

Responses to notices of irregularity cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(3).

The USPTO will not process any response filed after the IB response deadline. 37 C.F.R. §7.14(e).