TMEP 1906.01(b): Restriction of Holder’s Rights of Disposal

October 2017 Edition of the TMEP

Previous: §1906.01(a)(iv) | Next: §1906.01(c)

1906.01(b)    Restriction of Holder’s Rights of Disposal

Under Common Reg. 20(1)(a), a holder of an international registration or a Contracting Party of the holder (i.e., a Contracting Party in which the holder is a national, is domiciled, or has a real and effective business or commercial establishment) may inform the IB that the holder’s right to dispose of the international registration has been restricted in whole or in part.  Also, under Common Reg. 20(1)(b), the office of any designated Contracting Party may inform the IB that the holder’s right of disposal has been restricted in the territory of that Contracting Party.  Examples of restrictions on the holder’s right to dispose are security interests and court orders concerning the disposal of the assets of the holder.

The USPTO will accept for submission and forward to the IB a request to record a restriction of a holder’s right to dispose of an international registration, or the release of such a restriction, only if all of the following conditions have been met:

  • (1) (i) the restriction is the result of a court order; or (ii) the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder’s right of disposal, and the signature of the holder of the international registration cannot be obtained;
  • (2) the party who obtained the restriction is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States;
  • (3) the restriction or release applies to the holder’s right to dispose of the international registration in the United States; and
  • (4) the restriction or release applies to the designation to the United States.

37 C.F.R. §7.24(a).

All other requests to record restrictions must be filed with the IB. 37 C.F.R. §§7.22 and 7.24(a).

A request to record a restriction filed through the USPTO must include:

  • The international registration number;
  • The name and address of the holder of the international registration;
  • The name and address of the party who obtained the restriction;
  • A statement that the party who submitted the request: (i) is a national of the United States; (ii) has a domicile in the United States; or (iii) has a real and effective industrial or commercial establishment in the United States.  Where a party’s address is not in the United States, the party must provide the address of its United States domicile or establishment;
  • A statement that (i) the restriction is the result of a court order, or (ii) where the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder’s right of disposal, a statement, signed and verified or supported by a declaration under 37 C.F.R. §2.20, that, for the request to record the restriction, or release of the restriction, either the holder of the international registration could not obtain the signature of the party restricting the holder’s right of disposal because the party restricting the holder’s right of disposal no longer exists, or, after a good-faith effort, the holder of the international registration could not obtain the signature of the party restricting the holder’s right of disposal;
  • A summary of the main facts concerning the restriction;
  • An indication that the restriction, or the release of the restriction, of the holder’s right to dispose of the international registration applies to the designation to the United States or an international registration that is based on a U.S. application or registration; and
  • The United States transmittal fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.24(b).

A request to record a restriction or release submitted through the USPTO must be mailed using the First Class Service of the USPS to:

Madrid Processing Unit

600 Dulany Street

Alexandria

Virginia

22314-5793

37 C.F.R. §§2.190(e) and 7.4(b).  Alternatively, requests to record restrictions or releases 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).

Requests to record restrictions or releases cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(5).

If a request to record a restriction or release is mailed to the USPTO via the Priority Mail Express® service of the USPS, the USPTO will deem that the request 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®.

If the request meets the requirements of 37 C.F.R. §7.24(b),the USPTO will forward it to the IB. 37 C.F.R. §7.24(c).  If the request does not meet these requirements, the USPTO will refuse to forward the request to the IB, and will notify the holder of the reasons.  The USPTO will not refund the transmittal fee. 37 C.F.R §7.24(d).

If the IB determines that a request to record a restriction sent through the USPTO is irregular, the IB will notify both the USPTO and the holder.  Common Reg. 26(1).  The holder must file a response to any notice of irregularity with the IB; the response cannot be filed through the USPTO. 37 C.F.R. §7.24(e).

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to restrictions of a holder’s right to dispose of an international registration. 37 C.F.R. §7.22.