TMEP 1902.10: Transformation When the USPTO Is the Office of Origin

October 2017 Edition of the TMEP

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1902.10    Transformation When the USPTO Is the Office of Origin

If the IB cancels an international registration as a result of the cancellation or restriction of the USPTO basic application and/or USPTO basic registration under Article 6(4) ( see TMEP §1902.09), the holder may "transform" the international registration into national applications in the offices of the Contracting Parties that were designated for extension(s) of protection in the international registration.  Transformation must be requested within three months from the date of cancellation of the international registration.  Article 9 quinquies.  The filing date for the new national application(s) that results from the transformation of an extension of protection will be the international registration date (or the date of recordal of the subsequent designation requesting an extension of protection to that Contracting Party).

The goods/services in the national application(s) must have been covered by the cancelled international registration.  Transformation may be requested for some or all of the goods/services that are cancelled or restricted from an international registration.  Transformation may not be requested for goods/services that exceed the scope of those cancelled or restricted from the international registration.

Transformation of an extension of protection may take place only if the IB cancels or restricts the international registration at the request of the USPTO, due to cancellation of the USPTO basic application or USPTO basic registration.  It is not available if the international registration is cancelled at the request of the holder, or expires for failure to renew.  Transformation is not available at the Office of Origin.

The request for transformation must be filed directly with the designated Contracting Party, and will be examined as a national application under the laws of that Contracting Party.  The USPTO and the IB are not involved.

See TMEP §§1904.09 et seq. regarding transformation of a request for extension of protection to the United States into an application under §1 or §44 of the Trademark Act.