TMEP 1906.01(e): Limitation, Cancellation, or Renunciation of an International Registration

October 2017 Edition of the TMEP

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1906.01(e)    Limitation, Cancellation, or Renunciation of an International Registration

Requests to record a limitation, cancellation, or renunciation of an international registration must be filed with the IB; they cannot be filed through the USPTO. 37 C.F.R. §7.22.  There are forms for such requests on the IB website at http://www.wipo.int/madrid/en/forms.  Under Article 9 bis, a holder may record the following restrictions:

  • Limitation of some or all of the goods/services with respect to some or all of the designated Contracting Parties (Common Reg. 25(1)(a)(ii));
  • Cancellation of the international registration with respect to all the designated Contracting Parties for some or all of the goods/services (Common Reg. 25(1)(a)(v));
  • Renunciation with respect to some but not all of the designated Contracting Parties for all the goods/services (Common Reg. 25(1)(a)(iii)).

The office of a designated Contracting Party may declare that a limitation has no effect in its territory. Common Reg. 27(5)(a). For example, the USPTO will declare that a limitation has no effect if the requested change results in a broadening or extension, rather than a narrowing, of the goods/services.  In order to give such declaration effect, notice of the declaration must be sent to the IB within 18 months of the date of the IB’s notification of the limitation and must indicate the reasons the limitation has no effect, in whole or in part, the corresponding essential provisions of the law, and whether the declaration is subject to review or appeal. Common Reg. 27(5)(b)-(c). See TMEP §1904.02(f)(i) regarding limitations in general, TMEP §1904.03(g)(i)-(ii) regarding limitations or partial cancellations in pending requests for extension of protection (§66(a) applications), and TMEP §1904.15(a)–(b) regarding limitations or partial cancellations in registered extensions of protection to the United States (§66(a) registrations). See also TMEP §1904.02(e)(ii).