TMEP 501.07: Assignment of Extension of Protection of International Registration to the United States

October 2017 Edition of the TMEP

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501.07    Assignment of Extension of Protection of International Registration to the United States

15 U.S.C. §1141l  Assignment of an Extension of Protection:

An extension of protection 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 either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that is a Contracting Party.

Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection of an international registration 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 a party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).

Because the extension of protection remains part of the international registration, assignments of extensions of protection to the United States must be recorded at the International Bureau of the World Intellectual Property Organization ("IB").  The IB will notify the USPTO of any changes in ownership, including changes in owner name, recorded in the International Register.  The USPTO will record only those assignments (or other documents affecting title) that have been recorded in the International Register, and will automatically update the USPTO’s Trademark database to reflect these changes.

See TMEP §§1906.01 and 1906.01(a) for information about recording changes of ownership of international registrations with the IB.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of international registrations or extensions of protection to the United States. 37 C.F.R. §7.22.

See TMEP §§1110.11 and 1615.02 regarding division of an extension of protection to the United States after ownership of an international registration has changed with respect to some, but not all, of the goods/services.