1. USPTO Madrid Protocol Seminar on Tips for Filing International Applications and Maintaining International Registrations Preparing and Filing an International Application Karen M. Strzyz and Attiya Malik, Staff Attorneys October 23, 2013

2. A. USPTO TEASi Forms USPTO accepts 2 types of filing of international applications (IAs): o Electronic Applications: filed through the Trademark Electronic Application Submission International System (TEASi) on USPTO website. o Paper Applications: must be submitted to USPTO on IB’s MM2 form, available from WIPO  Must use MM2; US regulations written to require such. 2

3. A. USPTO TEASi Forms (cont’d) Electronically Filed (TEASi) IA: o TEASi forms on USPTO website allow filing an IA in 2 ways:  Pre-populated forms  Free-text forms 3

4. A. USPTO TEASi Forms (cont’d) Pre-populated Form Advisories: o Automatically displays the exact information already in the USPTO database for one specific US basic serial number or registration number. o If no changes are made to any data fields, USPTO automatically certifies the IA and transmits it directly to the IB, without independent review of this data. No human review of data. o If any changes are made to the data fields, an independent review of this data will occur by the MPU before the application can be certified and forwarded to the IB. 4

5. A. USPTO TEASi Forms (cont’d) Pre-populated Form Advisories (cont’d): o If there are mistakes by the applicant in the basic application, they will be reflected in the IA. They will become part of the international registration (IR) and cannot be corrected.  This may affect protection in designated countries.  Examples: hyphens, punctuation, wrong type of mark.  Color image and color not claimed will generate a black and white image.  Assignment did not automatically upload. Check assignment record. 5

6. A. USPTO TEASi Forms (cont’d) Free-Text Form Used When: o There is more than one underlying US basic application/registration on which the IA is based; or o The US basic application being used as the basis is not yet uploaded into USPTO’s database as of the time of filing the IA. 6

7. A. USPTO TEASi Forms (cont’d) Free-Text Form Advisories: o Information is NOT automatically certified. o Forms are routed to the USPTO’s Madrid Processing Unit (MPU) for review by trained Trademark Specialists. o Trademark Specialists review the data and certify that the information contained in the IA corresponds to the information in the basic application/registration. o Because the form must be manually completed, if applicant does not replicate the content of the basic application/registration exactly as required, the IA may be denied certification. 7

8. A. USPTO TEASi Forms (cont’d) For Both Electronically-Filed Forms: o The Application for International Registration “Wizard” asks applicant several questions to create the appropriate application sections that meet applicant’s specific needs.  Example: If designating the European Community, does applicant wish to claim seniority? 8

9. B. Paper-Filed Applications Must use IB’s MM2 form. MM2 is for designations under the Madrid Protocol only, and may be download from WIPO’s website. MM2 must be typewritten – no hand-written forms will be accepted. Common Regs. 9(2)(a) and 11(4)(a)(i); TMEP §1902.02(a). 9

10. C. International Application Filing Requirements International Application Must Include (Common Reg. 9(4)(a); 37 C.F.R. §7.11; TMEP §1902.02) 1.Filing date and serial number of the basic application and/or registration date and registration number of the basic registration; 2. Owner (name and entity) must be identical to the owner of the basic application/registration; 3.Applicant’s current address; 4.Reproduction of the mark must be the same as the mark in the basic application/registration; a.If mark in the basic is depicted in black and white and a color claim is not included, reproduction must be black and white; b.If mark in the basic is depicted in black and white and includes a color claim, must include both a black and white reproduction and a color reproduction; c.If mark in the basic is depicted in color, reproduction must be in color; d.If paper international application, mark must appear in the box designated on the MM2 form; 10

11. C. International Application Filing Requirements (cont’d) International Application Must Include (cont’d) (Common Reg. 9(4)(a); 37 C.F.R. §7.11; TMEP §1902.02) 5.Description of the mark must be the same as the description in the basic application/registration: a.Color claim must be included, if appropriate; 6.Indication of the type of mark, if the mark in the basic application/registration is: three dimensional mark; sound mark; collective mark; or certification mark; 7.List of goods/services is identical to or narrower than the list of goods/services in each claimed basic application/registration and classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) in effect as of the filing date of the international application; 8.List of designated contracting parties. If the goods/services are not the same for each designated contracting party, list the goods/services in the international application that pertain to each designated contracting party; 11

12. C. International Application Filing Requirements (cont’d) International Application Must Include (cont’d) (Common Reg. 9(4)(a); 37 C.F.R. §7.11; TMEP §1902.02) 9.Statement that applicant is entitled to file an international application in the Office, specifying that applicant: is a national of the US; has a domicile in the US; or has a real and effective industrial or commercial establishment in the US. Where applicant's address is not in the US, must provide address of applicant’s US domicile or establishment; 10.Certification fee; 11.If filed via TEASi, the international application fees for all classes and the fees for all designated contracting parties; and 12.If filed via TEASi, e-mail address for receipt of correspondence from the office. 12

13. D. Ownership Owner must be identical in the IA and in all basic applications/registrations. o Examples of common omissions/additions:  Name, e.g., “The” or “Inc.”  Entity type, e.g., “Corp.” or “LLC”  State/Country of organization, e.g., “New York” Common Reg. 9(4)(a)(i); 37 C.F.R. §7.11(a)(2); TMEP §1902.02(c). 13

14. D. Ownership (cont’d) How to fix ownership in basic applications/ registrations? o Assignment: file with the Assignment Recordation Branch and ensure USPTO database is updated. See TMEP Ch. 500. o Amendment, if correctible:  Application: file an amendment to the application, depending on status of application.  Registration: file §7 amendment. 37 C.F.R. §2.173; TMEP §1609.01.  Example: Mistake in owner name or entity. TMEP §1201.02 (c). 14

15. D. Ownership (cont’d) Once an IA is filed by the owner of the basic application/registration, the validity of the resulting IR is not affected by subsequent assignment or changes of ownership of the basic application/registration. o Example: If a parent corporation assigns the US basic application to its subsidiary, or an individual assigns the US basic registration to a corporate entity, the IR remains in the name of the original holder with no consequences. 15

16. E. Applicant’s Address If applicant’s current address is outside of the US, must provide the address of the US domicile or establishment. Common Reg. 9(4)(a)(ii); 37 C.F.R. §7.11(a)(2); TMEP §1902.02(c). 16

17. F. Applicant’s Representative (Optional) If a representative is appointed: o Name and complete address of representative must be listed; o Telephone/fax number and email address of representative should be provided; o Law firm may be appointed;  Better to identify firm rather than individual attorney;  It is recommended to put only one attorney name; o Does not have to be the same attorney and/or domestic representative as appointed in the basic application/registration; o No power of attorney or other separate document should be sent to the IB; o Appointment only empowers representative to act before the IB. It may become necessary to appoint one or more additional representatives to act before the offices of designated contracting parties. Example: refusal issued by an office. Common Regs. 3(2) and 9(4)(a)(iii); TMEP §1902.11. 17

18. G. Entitlement Applicant must specify the entitlement grounds: o is a national of (citizen of) the US; o has a domicile in the US – must indicate the US address of the claimed entitlement; or o has a real and effective commercial or industrial establishment in the US – must indicate the US address of the claimed entitlement. Common Reg. 9(5)(b); 37 C.F.R. §7.11(a)(11); TMEP §1902.02(j). Paper IA submitted on MM2: o Box 3 “Entitlement to File”: US filer should not check option 3(a)(ii). (where the contracting party mentioned in item 1 is an organization, the name of the state of which the applicant is a national). This option is when the Office of origin is an organization such as OHIM or Benelux. 18

19. “United States” includes and embraces all territory which is under US jurisdiction and control. o This includes: the several states (50 states), the District of Columbia, the commonwealths (Puerto Rico, Northern Mariana Islands), the territories and possessions of the US (Guam, U.S. Virgin Islands, American Samoa). “National” has the same meaning as in Article 2 of the Paris Convention. It can be the national citizenship of an individual or the jurisdiction of formation/incorporation of a legal entity. o The question of whether a natural person or a legal entity is a “national” of or has a “domicile” in a particular country is a matter of the law of each designated country. 19 G. Entitlement (cont’d)

20. “Real and effective industrial or commercial establishment” is taken from Article 3 of the Paris Convention. o Need not be the principal place of business, but must be “real,” i.e., not fraudulent or fictitious. o While no case law exists relating to Madrid filings, the same meaning of “real and effective industrial or commercial establishment” that applies in §44 filings applies in the context of Madrid entitlement. Section 44 is based on the Paris Convention and Madrid incorporates provisions of Paris. 20 G. Entitlement (cont’d)

21. Establishing Country of Origin: o The presence of an applicant’s wholly owned subsidiary in a country does not, by itself, establish country of origin. In re Aktiebolaget Electrolux, 182 USPQ 255 (TTAB 1974). The fact that the applicant is wholly owned by a foreign company does not establish country of origin. Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006). TMEP §1002.04. USPTO cannot advise about entitlement. o An enterprise may have several real and effective industrial or commercial establishments in different countries that are party to Madrid and, thus, may have the option of several countries of origin. 21

22. H. Reproduction of Mark Must be the same as in basic application/registration. Nature of the mark: o Standard character  Typed drawings are legally equivalent to standard character o Non-standard character: a.description of mark b.color(s) claimed c.color location statement Common Regs. 9(4)(a)(vi)-(vii bis ); 37 C.F.R. §§7.11(a)(3)-(4); TMEP §§1902.02(d)-(e). 22

23. H. Reproduction of Mark (cont’d) If basic mark is depicted in black and white and a color claim is not included, reproduction must be black and white. If basic mark is depicted in black and white and includes a color claim, must include both a black and white reproduction and a color reproduction. o This pertains to older registrations containing black and white drawings with lining statements. If basic mark is depicted in color, regardless of whether a color claim is included, reproduction must be in color. 23

24. H. Reproduction of Mark (cont’d) If paper IA, mark must appear and fit in Box 7 designated on the MM2 form. Note for TEASi filing using pre-pop form: o If the base application/registration is in color, must claim color in the IA. Unchecking the color claim box on the TEASi form will generate a black and white image. This will result in denial of certification. If color is not intended in the IA, must amend the basic mark to black and white. 24

25. H. Reproduction of Mark (cont’d) If not the same, all basic(s) should be corrected before filing IA: o Application: contact examining attorney or file post publication amendment, depending on application status. o Registration: file §7 amendment. 37 C.F.R. §2.173; TMEP §1609.01. 25

26. I. Description of Mark Must be the same as the description of the mark in the basic application/registration. Common Reg. 9(4)(a)(xi); 37 C.F.R. §7.11(a)(5); TMEP §1902.02(k). A color claim statement must be included, if appropriate. Common Regs. 9(4)(a)(vii)-(vii bis ); 37 C.F.R. §§ 7.11(a)(4) and 7.12; TMEP §1902.02(e). 26

27. I. Description of Mark (cont’d) Special Type/Category of Mark: o If the basic mark is one of the following, the IA must indicate the same by checking the appropriate box:  Three dimensional mark: checking this box indicates the mark is trade dress (i.e., product design, product packaging, interior/exterior of buildings);  Sound mark; or  Collective mark or certification mark. Common Regs. 9(4)(a)(viii)-(x); 37 C.F.R. §7.11(a)(6); TMEP §1902.02(l). 27

28. I. Description of Mark (cont’d) TEASi Free-text form mark description field: o “Mark description” field: This information must be identical to the information in the basic application/registration, even if the description in the basic is not accurate.  Slide updated 10/24/13. 28

29. I. Description of Mark (cont’d) TEASi Free-text form when basic mark is in color but color is not yet claimed in basic: o “The parts of the mark in color consist of” field: This information should be identical to the information in the “Mark description” field, even if the description in the basic application/registration is not accurate. o For older basic registrations containing lining statements, may add color statement describing where the colors appear in the mark.  Slide updated 10/24/13. 29

30. I. Description of Mark (cont’d) TEASi Free-text form when basic mark is in color but color is not yet claimed in basic (cont’d): o “The color(s) in the mark is/are” field: If the basic application/registration contains a color claim, it must appear here. If the basic is in color but there is no color claim statement, do not identify color(s) here.  Slide updated 10/24/13. 30

31. I. Description of Mark (cont’d) Paper MM2 form when color is claimed: o Box 8 Color(s) Claimed:  8(a): If the basic application/registration contains a color claim, check the box and list colors claimed in the base.  8(b): This field is for a color location statement. This information must be identical to the information stated in the Box 9(e) “Description of the mark” field in the IA. o Box 9 Miscellaneous Indications:  9(e) “Description of the mark”: This information must be identical to the description information in the basic application/registration, even if the description in the basic is not accurate. 31

32. J. Identification of Goods/Services Must be the same as or less than the goods/services in the US basic application/registration. If not the same for each designated contracting party, must include a limitation specifically listing those goods/services that pertain to each designated contracting party. Common Reg. 9(4)(a)(xiii); 37 C.F.R. §7.11(a)(7); TMEP §1902.02(f). 32

33. J. Identification of Goods/Services (cont’d) If limiting goods/services/classes in the IA with respect to some or all of the designated countries: o The limitation must be within scope of the goods/services in the basic application/registration. 37 C.F.R. §7.11(a)(7); TMEP §1902.02(f); see also TMEP §§1402.07- (e). 33

34. K. Classification of Goods/Services USPTO does not certify classification. TMEP §1902.02(g). Applicant must select a class from the edition of the Nice Agreement in effect as of the filing date of the IR. 37 C.F.R. §7.11(a)(7); TMEP §1902.02(g). o Classification may be added/changed but only in accordance with the Nice Agreement. TMEP §§1902.02(g) and 1902.02(g)(i). 34

35. K. Classification of Goods/Services (cont’d) If incorrect, the IB will issue a notice of irregularity and require applicant to re-classify and pay any fees due. o If fees due are not paid, the IA is abandoned. Applicant may delete goods/services instead of adding class(es) and/or paying more fees OR try to explain to the IB why the goods/services, as worded, are classified correctly.  Slide updated 10/24/13. 35

36. L. Claiming Priority (Optional) To claim priority under Paris Convention: 1.The IA must contain a claim of priority; and 2.The filing date of the first filing that forms the basis of the priority claim must be within 6 months of the filing of the IA. The IB will disregard any claimed priority date that is more than 6 months. Common Reg. 9(4)(a)(iv) and 14(2)(i); TMEP §1902.05.  Slide updated 10/24/13. 36

37. L. Claiming Priority (Optional) (cont’d) If the earlier filing does not relate to all the goods/services listed in IA, must list the goods/services to which it does relate. NOTE: If priority is based on a US basic application, must list the US application serial number and filing date in both the “Basic Application” and the “Priority Claimed” sections of the IA. o The MM2 form has 2 separate boxes, one for the basic applications/registrations numbers (Box 5) and one for the filing numbers on which priority is claimed (Box 6). If the 2 nd box is not completed, the priority claim will not be accepted. 37

38. M. Claiming Seniority (Optional) Claiming seniority is optional. To claim seniority: An applicant designating the European Community may claim seniority of one or more earlier registrations in, or for, a Member State of the European Community for the same mark and covering the same goods/services by indicating the following: 1.Each Member State in or for which the earlier mark is registered; 2.Date from which the earlier registration is effective; 3.Registration number; and 4.Goods/Services covered by the earlier registration. Common Reg. 9(5)(g)(i); TMEP §§1902.02(h) and 1902.05. Second working language If paper IA (MM2), must select a second language to avoid an irregularity. 38

39. Information may be provided in the IA to avoid a provisional refusal or requirement by a designated contracting party, e.g.,: o Translation of elements of mark into English, French, or Spanish. Common Reg. 9(4)(b)(iii); TMEP §1902.05.  Indication that terms in mark have no meaning and cannot be translated; o Disclaimer of any part of the mark. Common Reg. 9(4)(b)(v); TMEP §1902.05.  Just because disclaimer exists in the basic application/registration, it is not required to be included in the IA.  Slide updated 10/24/13. 39 N. Specific Requirements of Designated Contracting Parties

40. O. Miscellaneous Marks on Supplemental Register: o If a mark is registered on the Supplemental Register in the US, it may be used a basic application/registration. Substantive Refusals: o Just because mark is, for example, found descriptive in the US does not mean it will be found descriptive in other designated countries. 40

41. O. Miscellaneous (cont’d) Consequences of Filing an International Application Shortly After Filing the Basic Application During prosecution of the US basic application, especially §1(b), amendments may be made and the mark and/or goods/services that eventually register may be different than originally filed. When the US basic registration issues, the IR: o Is not updated with the mark that registered in the US; o Is updated with the goods/services that registered in the US. This may result in the IR protecting one type of mark and/or goods/services and the basic registration protecting a different type of mark and/or goods/services. 41

42. O. Miscellaneous (cont’d) Consequences of Filing an International Application Shortly After Filing the Basic Application Reproduction of the Mark: Amendments to the US basic mark and the mark that eventually registers may be quite different than the mark that is registered in the IR. o Example: Basic mark is filed as RIGHT-ON. The IA is filed and mark registers as RIGHT-ON. The basic mark then registers as RIGHT ON (without the hyphen). There is no provision in the Madrid rules to change the mark in the IR to RIGHT ON. 42

43. O. Miscellaneous (cont’d) Consequences of Filing an International Application Shortly After Filing the Basic Application Goods/Services: Amendments to goods/services in the US basic application may affect options when responding to notices of irregularity concerning the goods/services listed in the IA. Example: Basic mark is filed for “clothing.” The IA is filed and mark registers for “clothing.” The goods are amended during prosecution and the basic mark then registers for “shirts, pants, and hats.” The IR will be updated to reflect “shirts, pants, and hats.” 43

44. O. Miscellaneous (cont’d) Consequences of Filing an International Application Shortly After Filing the Basic Application Encourage IA filers to WAIT until at least the issuance of the first USPTO Office action. o May claim priority so long as the IA is filed within 6 months of the filing of the US basic application. 44

45. Thank You!