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October 23, 2013

USPTO Madrid Protocol Seminar on Tips for Filing International Applications and Maintaining International Registrations Miscellaneous Issues. October 23, 2013. Miscellaneous Issues. Subsequent Designation

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October 23, 2013

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  1. USPTO Madrid Protocol Seminar onTips for Filing International Applications and Maintaining International RegistrationsMiscellaneous Issues October 23, 2013

  2. Miscellaneous Issues • Subsequent Designation • Section 71 Affidavit of Use or Excusable Non-Use (Required for Section 66(a) Registration)

  3. Subsequent Designation

  4. A. Subsequent Designation Cannot Be Filed in Certain Countries • Subsequent designations cannot be filed in the following countries before their accession date: • Estonia, India, Namibia, Philippines, and Turkey • Must file an international application (IA) for any of these countries. Article 14(5).

  5. A. Subsequent Designation (cont’d) Definition of Subsequent designation After an international registration (IR) issues, the holder may request an extension of protection to seek trademark protection of that IR in additional contracting parties. TMEP §§1902.08-1902.08(e).

  6. A. Subsequent Designation (cont’d) Reason for Seeking Subsequent Designation • The holder can avoid filing new, separate IAs in additional countries to seek protection of the same mark for any of the goods/services in the IR. • Instead, the holder may simply file a subsequent designation and select additional countries in which extension of protection of international registration is sought.

  7. A. Subsequent Designation (cont’d) Countries That May Be Designated • New country which was not a contracting party when the IA was filed. • Example: Egypt – Protocol membership effective Sept. 3, 2009. • Country in which protection was originally refused, or later invalidated, and the grounds for refusal or invalidation no longer exist. • Example: A prior registration of conflicting mark has expired and no longer poses a bar to obtaining protection. • Country in which protection was not originally sought. • Example: The U.S. was not selected in the IA and may be added now.

  8. A. Subsequent Designation (cont’d) Number of Countries There is no limit as to the number of contracting parties that the holder may designate in a subsequent designation.

  9. A. Subsequent Designation (cont’d) Goods/Services That May be Subsequently Designated • All goods/services in the IR to a new contracting party; or • Some goods/services in the IR to a new contracting party; or • All or some goods/services in the IR to a contracting party who previously refused or invalidated protection. • Slide updated 10/24/13.

  10. A. Subsequent Designation (cont’d) Filing the Subsequent Designation • Under Rule 24(2)(a) of the Common Regulations, a subsequent designation may be presented to the International Bureau (IB): • directly by the holder; or • through the office of origin of the holder, if that office is the contracting party in which the basic application/registration is held.

  11. A. Subsequent Designation (cont’d) Method of Filing Subsequent Designation • Subsequent designation presented to the IB through the USPTO may be: • filed electronically via the USPTO TEASi system; • mailed to the USPTO; or • hand delivered to the USPTO. • Subsequent designation may NOT be transmitted via facsimile.

  12. A. Subsequent Designation (cont’d) USPTO Electronic Form • If subsequent designation is filed through the USPTO (because it is holder’s office of origin): • Electronic Filing: If filed through the USPTO, USPTO strongly recommends filing through its Trademark Electronic Application Submission International System (TEASi) and provides an electronic form specifically for subsequent designations. • The TEASi form is the most efficient method of transmission of the designation to the IB.

  13. A. Subsequent Designation (cont’d) Paper Form • If subsequent designation is filed through the USPTO (because it is holder’s office of origin): • Paper Filing: the USPTO requires the use of IB’s MM4 form filed in English, and the form must be typed and not handwritten. • Paper designations are scanned into the USPTO’s database and the actual form is forwarded via postal courier to the IB.

  14. A. Subsequent Designation (cont’d) US Requirements for Filing Subsequent Designation (Common Regs. 24(2)-(3); 37 C.F.R. §7.21; TMEP §1902.08(a)) • International registration number; • Serial number of the U.S. application or registration; • Name and address of the holder; • Statement that the holder is entitled to file a subsequent designation through the USPTO; • List of goods/services; • List of designated Contracting Parties and any limitations to goods/services; and • Fee for transmittal by the USPTO.

  15. A. Subsequent Designation (cont’d) MPU Role • The MPU does not certify subsequent designations. • If the US filing requirements for a subsequent designation: • are met, and filed electronically, the subsequent designation is routed to the IB. • If filed on paper, MPU will review to ensure that: (1) the IR has issued and (2) the designated countries are not currently designated. • If not met, MPU will return the designation to the holder and the USPTO transmittal fee is not refunded.

  16. A. Subsequent Designation (cont’d) IB Examination Upon receipt from the holder or the holder’s office of origin, the IB examines the subsequent designation in accordance with Rule 24 of the Common Regulations and determines whether all filing requirements are met.

  17. A. Subsequent Designation (cont’d) IB Examination – Requirements Met • Recording: the IB records the designation in the International Register; and • Notification: the IB notifies the offices of the designated contracting parties. • Once notified, the offices of the designated contracting parties must comply with all rules affecting time limits for notifications of provisional refusals, as outlined in Rules 16-18 of the Common Regulations.

  18. A. Subsequent Designation (cont’d) IB Examination – Requirements NOT Met • The IB issues a notice of irregularity and notifies: • the holder; and • the office of origin, if the designation is presented to the IB through the office of origin.

  19. A. Subsequent Designation (cont’d) Notice of Irregularity • A notice of irregularity from the IB states any deficiencies in (i.e., problems with) the subsequent designation. • The holder is given the opportunity to correct (i.e., fix) the deficiencies.

  20. A. Subsequent Designation (cont’d) Response to Notice of Irregularity • Upon receipt of the notice of irregularity from the IB, the holder must: • respond to the notice within 3 months; • submit the response directly to the IB, even if the subsequent designation was presented through the USPTO; and • correct the irregularities with the response. • If the irregularity is not corrected within 3 months, the subsequent designation is abandoned. • The USPTO only makes note of the notice of irregularity in its automated records. It does not take any other action, such as docket the notices or send reminders to holders.

  21. A. Subsequent Designation (cont’d) Effective Date • “Effective date” refers to the date on which trademark protection begins in the contracting parties named in the subsequent designation. • A subsequent designation takes effect on the date all filing requirements are met and all irregularities are corrected. • A subsequent designation will not take effect on the date the IR issued.

  22. A. Subsequent Designation (cont’d) Effective Date • If filed directly with the IB, the “effective date” of the subsequent designation is: • The actual date the subsequent designation is received by the IB, if all filing requirements are met, regardless of the time it takes the IB to process the designation; or • The date any irregularities in the subsequent designation are corrected.

  23. A. Subsequent Designation (cont’d) Effective Date (cont’d) • If filed with the IB through the office of origin, the “effective date” of the subsequent designation is: • If filing requirements are met, the actual date of receipt by the office of origin; or • If the designation is not received by the IB within 2 months of the date of receipt in the Office of Origin, the actual date of receipt by the IB; or • If there are irregularities in the designation, the date all irregularities are corrected; or • If the irregularities in the designation are corrected within 2 months of the date the designation is received in the office of origin, the original date of receipt by the office of origin.

  24. A. Subsequent Designation (cont’d) Effective Date (cont’d) • Alternatively, the holder may select the “effective date” of the subsequent designation: • The holder may request the IB that the subsequent designation take effect after the occurrence of a later event, such as: • after the recording of a change in, or a cancellation of, the IR; or • after the renewal of the IR.

  25. A. Subsequent Designation (cont’d) Expiration of Subsequent Designation • The period of protection of a subsequent designation expires on the same date as the IR. • Example: The IR expires on May 1, 2012. A subsequent designation is filed and meets the filing requirements such that its effective date is March 1, 2012. • The subsequent designation expires on May 1, 2012. • Both the IR and the subsequent designation must be renewed to maintain protection after May 1, 2012.

  26. A. Subsequent Designation (cont’d) Expiration of Subsequent Designation (cont’d) • Filing a subsequent designation shortly before the renewal of the IR is due can lead to problems, since the subsequent designation expires on the same date as the IR. • It may be better to wait to have the subsequent designation take effect after the renewal of the IR and, thus, not owe renewal fees with respect to the countries named in the subsequent designation.

  27. Section 71 Affidavit of Use or Excusable Non-Use Required for Section 66(a) Registration

  28. B. Section 71 Affidavit of Use orExcusable Non-Use Reason for §71 Affidavit • A registered extension of protection to the US (i.e., §66(a) registration) will be cancelled, unless the holder of the IR periodically files affidavits of use in commerce or excusable nonuse (“§71 affidavits”). 15 U.S.C. §1141k; TMEP §§1904.10 and 1613.01-1613.19.

  29. B. Section 71 Affidavit of Use orExcusable Non-Use (cont’d) Requirements for Filing §71 Affidavit • Include the U.S. registration number; • Filed in proper time period (same as §8); • Proper Fee (same as §8); • Filed by Owner/Holder; • Verified properly (Affidavit or Declaration); • State Use in Commerce (or claim non-use); • Specify goods/services in use; • Specify goods/service not in use; • Include showing that any nonuse is due to special circumstances; • Include a proper specimen for goods/services in use (1 per class). 15 U.S.C. §1141(k)(b); TMEP §1613.05.

  30. B. Section 71 Affidavit of Use orExcusable Non-Use (cont’d) Deficiencies in §71 Affidavit • Filers will be notified of deficiencies in the §71 affidavit and provided an opportunity to correct them. • If corrected after the statutory time period, a deficiency fee is required. 15 U.S.C. §1141(k)(c).

  31. B. Section 71 Affidavit of Use orExcusable Non-Use (cont’d) Time for Filing §71 Affidavit • The §71 affidavit must be filed between the: • 5th and 6th year; • 9th and 10th year; • 19th and 20th year, etc. • These time periods run from the registration date in the US of the extension of protection – not from the IR date at the IB. 15 U.S.C. §1141(k); 37 C.F.R. §7.36.

  32. B. Section 71 Affidavit of Use orExcusable Non-Use (cont’d) Who must file the §71 Affidavit? • The “holder” of the IR must file the affidavit. 15 U.S.C. §1141(k). • The “holder” is the is the natural or juristic person in whose name the IR is recorded on the International Register. 15 U.S.C. §1141(7). • A change of “holder” may only be filed with the IB. 37 C.F.R. §7.22.

  33. B. Section 71 Affidavit of Use orExcusable Non-Use (cont’d) Who must file the §71 Affidavit? (cont’d) • Actual evidence cannot be submitted to the USPTO to establish ownership of a registered extension of protection. • The holder cannot file an assignment of an extension of protection directly with the Assignment Recordation Branch of the USPTO.

  34. B. Section 71 Affidavit of Use orExcusable Non-Use (cont’d) Notification of Change of Name or Change of Ownership • Notification of change of name of the holder or change in ownership of the IR, in whole or in part, must come directly from the IB.  37 C.F.R. §7.22; TMEP §1904.06. • The IB will notify the USPTO of any change in owner name or ownership recorded in the International Register, and the USPTO will automatically update its database to reflect the changes.

  35. Thank You!

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