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

This is the October 2015 Edition of the TMEP

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

Requests to record a limitation, renunciation or cancellation 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 9bis, a holder may record the following restrictions:

  • Limitation of the list of 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, e.g., because it determines that the change requested results in an extension rather than a limitation. Such declaration must be sent to the IB within 18 months of the date of the IB’s notification of the limitation. Common Reg. 27(5).

See TMEP §1904.03(g) regarding limitations in pending §66(a) applications, and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States. See also TMEP §1904.02(e)(ii).