TMEP 1904.06: Assignment of Extension of Protection to the United States

October 2017 Edition of the TMEP

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1904.06    Assignment of Extension of Protection to the United States

Under §72 of the Trademark Act, 15 U.S.C. §1141 l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is either: (1) party to the Madrid Protocol, or (2) a member of an intergovernmental organization that is a party to the Madrid Protocol.

Because an extension of protection remains part of the international registration, assignments of extensions of protection to the United States must first be recorded at the IB. A holder or assignee cannot file an assignment (or other document transferring title) of an extension of protection to the United States directly with the Assignment Recordation Branch of the USPTO.  The USPTO will record only those assignments (or other documents transferring title) that have been recorded with the IB.  The IB will notify the USPTO of any changes in ownership recorded in the International Register, and the USPTO will automatically update the Trademark database and the Assignment database to reflect the change(s). See TMEP §501.07.

See TMEP §§1906.01 et seq. regarding requests to record a change of ownership in the International Register.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to §66(a) applications or registered extensions of protection. 37 C.F.R. §7.22.