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

This is the October 2015 Edition of the TMEP

Previous: §1902.08(a) | Next: §1902.08(c)

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

The holder of an international registration submitting a subsequent designation through the USPTO may file either through TEAS or on the official paper form issued by the IB. 37 C.F.R. §7.21(b).

When filing through TEAS, the holder must enter the required information in the data fields of the free-text TEAS form. Holders filing subsequent designations on paper through the USPTO should use the official IB form MM4 posted 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. The form cannot be handwritten. Article 3ter(2); Common Reg. 24(2)(b); Madrid Admin. Instrs. §§2 and 6(a). The holder should complete the MM4 form online, print the completed form, and submit it to the USPTO via mail, hand delivery or courier service.

The IB’s Guide to International Registration, available on the IB’s website at www.wipo.int/madrid/en, contains instructions for completing the subsequent designation form, at B.II.37.01–37.22.

The subsequent designation form may be mailed to the USPTO at 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, subsequent designations may also 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).

If a subsequent designation is mailed to the USPTO via the Priority Mail Express® service of the USPS, the USPTO will deem that the subsequent designation was submitted on the day it was deposited as Priority Mail Express®, provided that the holder complies with the requirements for correspondence sent by Priority Mail Express® set forth in 37 C.F.R. §2.198. 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 subsequent designations. 37 C.F.R. §§2.197(a)(2)(ii) and 7.4(e).

When submitting a paper subsequent designation, a holder should include a self-addressed, stamped postcard. Upon receipt of the subsequent designation, the USPTO will place a label indicating the receipt date on the documents, and return the postcard to the holder.

Subsequent designations cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(2).