TMEP 1904.07(d): Issuance of Notice of Invalidation to the International Bureau

This is the October 2015 Edition of the TMEP

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1904.07(d)    Issuance of Notice of Invalidation to the International Bureau

Once the registered extension of protection has been cancelled by the USPTO, the Director shall issue to the IB a notice of invalidation of the registered extension of protection to the United States. See Article 5(6). The USPTO must notify the IB of the following information in the notice of invalidation: the administrative or judicial authority (i.e., the Director or federal court) that cancelled the registered extension of protection, the date on which the invalidation was pronounced and the effective date of the invalidation, and the fact that it is no longer subject to appeal; the number of the international registration and the name of the holder; and, if the invalidation does not concern all the goods/services, state those that are concerned (indicating either the goods/services that are no longer covered, or those that remain covered). Common Reg. 19(1).

If the holder seeks to expedite the issuance of the notice of invalidation to the IB, the holder may request in writing that the USPTO expedite the processing of the notice of invalidation of the registered extension of protection. The request should be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. Such a request should be directed to the Madrid Processing Unit via e-mail at MPU@uspto.gov.

Upon receipt of the notice of invalidation from the USPTO, the IB will record the invalidation in the International Register, inform the holder, and inform the USPTO of the date on which the invalidation was recorded in the International Register. Common Reg. 19(2).

After a registered extension of protection to the United States has been cancelled and inscribed in the International Register as invalidated, the holder may submit a subsequent designation seeking protection in the United States of the same mark for all or some of the goods/services in the international registration. The IB will not process a subsequent designation until the notice of invalidation has been recorded in the International Register. The holder may submit a subsequent designation prior to the recordal of the invalidation and request that it take effect immediately after the recording of the invalidation in the International Register. Common Reg. 24(3)(c)(ii). Upon notification, the USPTO will examine the subsequent designation to determine if protection may be granted.