The United States Patent & Trademark Office (“USPTO”) will be considered the Office of Origin if an international application is based on a pending application or a registration issued by the USPTO. The International application must include the filing date and serial number of the basic application or the registration date and registration number of the basic registration. The USPTO will not certify the international application if this information is incorrect. Only the owner of the basic application or registration can file an international application. The applicant’s name cannot be changed. The international applicant’s name must be identical to the name and entity of the applicant or registrant of the basic application or registration. However, it is acceptable if the Assignment Division of the USPTO shows a clear chain of title to the international applicant.
An international application must include a reproduction of the trademark that is the same as the mark shown in the basic application or registration. For example, if the mark in the basic registration is in special format then, the mark in the international application must be in special form and not standard characters. The same rule applies to a color claim. If color is claimed as a feature of the mark in the basic registration then the international application must include a statement that color is claimed as a feature of the mark as well. An international application shall include a list of goods and/or services that is either identical to the list included in the basic application or registration or narrower than the goods or services indicated. An international application cannot broaden the list of goods or services.
An international application must list at least one Contracting Party to which the applicant seeks an extension of protection. To determine whether a country is a contracting party to the Madrid Protocol, review the member list on the WIPO website at http://www.wipo.int/madrid/en/members. See our webpage entitled, International Trademark Filings, for the advantages of filing through the Madrid Protocol. An international application must state that the applicant is entitled to file an international application either because the applicant: (1) is a national of the U.S.; (2) has a domicile in the U.S.; or (3) has a real and effective industrial or commercial establishment in the U.S. If the information contained in the international application correlates to the information in the basic application or registration, the USPTO will certify the international application and forward it to the International Bureau (“IB”).
If the IB receives an international application within two months of the USPTO date of receipt, this will become the official date of the international application. If the IB receives the international application after two months from the date of receipt of the USPTO, the date of the international application will be the date the IB receives the application. If the international application meets the requirements, then the IB will “register the mark” and publish the registration in the WIPO Gazette Of International Marks. If the IB notes an irregularity, the applicant and the USPTO will be notified. The applicant must correct certain irregularities, while others must be corrected by the USPTO. Irregularities must be cured within the time frame afforded by the IB or else the international application will go abandoned.
Once the IB publishes the international trademark application, it will be forwarded to the member countries specified in the application for examination. If approved, the member country will grant protection. If changes need to be made to the international application, most requests should be filed with the IB. These requests include: (1) change in ownership of the registration; (2) change of holder’s name and address; (3) change of name or address of holder’s attorney or representative; or (4) limitation, renunciation, or cancellation of the international registration. Under the limited circumstances of an assignment or a security interest meeting certain statutory requirements, then the request to record a change should be filed through the USPTO with the IB.
International trademark filings are becoming more and more popular in today’s global economy, see our web page entitled, Why Register A Trademark Outside the U.S.? However, filing international trademark applications is a technical process that should be guided by experienced counsel. If you are considering filing an international trademark application, please feel free to contact our office for a courtesy consultation.