MADRID PROTOCOL FORMS
SYSTEM AVAILABILITY: All Filers should check Current Server Status and Planned Outages before beginning the application process. If you have a filing due today and the document cannot be filed via TEASi, you must use an alternative method of filing to ensure that the document is timely received by the USPTO.
- Application for International Registration
Use this form to submit an international application for registration. If the international application meets the requirements of 37 C.F.R. §7.11(a), the USPTO will certify and forward the international application to the International Bureau of the World Intellectual Property Organization (IB). An international application submitted through the USPTO must be based on either (1) an application(s) that is currently pending in the USPTO; or (2) a registration(s) that the USPTO already issued. The international application may be based on more than one basic application or registration only if the mark and the owner are the same for all of the basic applications and/or registrations.
Advisory: For important information, please see the Tips for Avoiding Denial of Certification of International Application.Note: All fees associated with the international application, i.e., the U.S. certification fee and the international application fees, must be paid at the time of submission. The U.S. certification fee is $100.00, per class, if the international application is based on one single basic application or registration; or $150.00 per class, if the international application is based on more than one basic application or registration. A schedule of international fees and fee calculator are available online at http://www.wipo.int/madrid/en/. The international application fees may be paid through the USPTO in U.S. dollars or directly to the IB in Swiss francs.
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- Subsequent Designation
A subsequent designation is a request by the holder of an international registration for an extension of protection of the registration to additional countries that are party to the Madrid Protocol (Contracting Parties). The holder of an international registration may use this form to submit a subsequent designation through the USPTO for forwarding to the International Bureau of the World Intellectual Property Organization (IB), provided that: (1) the holder is a U.S. national, either domiciled in the United States, or having a real and effective industrial or commercial establishment therein; and (2) the international registration is based on a U.S. basic application or registration.
Note: All fees associated with the subsequent designation, i.e., the U.S. transmittal fee and the international fees for filing a subsequent designation, must be paid at the time of submission. The U.S. transmittal fee is $100.00. A schedule of international fees and a fee calculator are available online at http://www.wipo.int/madrid/en/. The international fees may be paid through the USPTO in U.S. dollars or directly to the IB in Swiss francs.
___________________________________________________________________________________________ - Response to a Notice of Irregularity
Use this form only if (1) you are submitting a response to a notice of irregularity in an international application issued by the International Bureau of the World Intellectual Property Organization (IB); and (2) the IB response deadline has not expired. You may not use this form to respond to any IB irregularities notice concerning another Madrid-related filing.
Note – Response Must Be Complete: If your previous response was denied, you must respond completely to each issue raised in the notice of irregularity from the IB to which you are responding through the USPTO. Please note that all fee irregularities must be remedied directly with the IB. Even if your previous response to the irregularity submitted to the USPTO successfully addressed some of the issues, those responses must be restated in this response, along with addressing the additional issue(s) raised in the USPTO denial.
___________________________________________________________________________________________ - Replacement request
Use this form to request the USPTO to note the replacement of a U.S. national registration with a registered extension of protection pursuant to Section 74 of the Trademark Act. 15 U.S.C. §1141n; 37 C.F.R. §7.28(a). The USPTO will only note the replacement in USPTO records and notify the International Bureau if the registered extension of protection and the U.S. national registration are (1) owned by the same party; (2) identify the same mark; and (3) list the same goods and/or services.
Warning: You cannot file the request to note replacement of the U.S. national registration until the registration based on the request for extension of protection of the international registration issues. For more information on replacement, see TMEP §1904.12.
___________________________________________________________________________________________ - Transformation request
Use this form if as the holder of an international registration that has been cancelled, in whole or in part, you want to request the USPTO to transform the cancelled extension of protection into an application under Section 1 or 44 of the Trademark Act for registration of the same mark for any or all of the cancelled goods and/or services. The holder, or a practitioner meeting the requirements of 37 C.F.R. §11.14(a), must file such a request directly with the USPTO, and the transformed application will be examined as a domestic application.
You must file this form within three (3) months after the date on which the international registration is cancelled, in whole or in part, and must include the elements required by 37 C.F.R. §7.31(a), including the holder's name and address, an email address for receipt of USPTO correspondence, and the domestic application filing fee for at least one class of goods or services. The filing fee is $275 per class if you select the TEAS Reduced Fee filing option or $325 if you select the TEAS Regular filing option. For further information on transformation, see TMEP §1904.09 et seq.
___________________________________________________________________________________________ - Declaration of Use and Excusable Nonuse under Section 71
Preview Section 71 form [PDF] prior to accessing the electronic version through the numbered link, above. Do not attempt to file the PDF version because it is for viewing purposes only and not the entrance of any information. To prepare and file the electronic form, you must click on the form title that follows 6. at the top of this section.
Use this form to submit the required maintenance filings under Section 71 for a registered extension of protection (Madrid Protocol).
You must file a Section 71 declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th)-year anniversaries of the date on which the USPTO issued the certificate of extension of protection (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th)-year anniversary date). You must subsequently file a Section 71 declaration, specimen, and fee on a date that falls on or between the ninth (9th) and tenth (10th)-year anniversaries of the date on which the USPTO issued the certificate of extension of protection, and each successive ten-year period thereafter (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following each ten-year period). Failure to file the required Section 71 will result in cancellation of the registration and invalidation of the extension of the international registration to the United States.
Note: The owner of a registered extension of protection of an international registration to the United States must renew the international registration directly with the International Bureau (IB). Under Section 70(b) of the U.S. Trademark Act, if the international registration is not renewed, the IB will notify the USPTO that the international registration has expired. The USPTO will then update its records to cancel the corresponding extension of protection to the United States as of the expiration date of the international registration.
Note On Representation: The USPTO considers powers of attorney to end upon either (1) the date of registration; or (2) the final acceptance or denial of a required post-registration filing. Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. The filing of this form will automatically update the "Attorney of Record" and the "Correspondence Address" data fields in the USPTO's TSDR database. After submission of this form, it is not necessary to file a separate Appointment of Attorney form or Change of Correspondence Address form. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 71, the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of attorney. For more information on who may represent registrants before the USPTO, please see TMEP §§602 et seq.
___________________________________________________________________________________________ - Combined declaration of use & incontestability under Sections 71 & 15
Preview Section 71 and 15 form [PDF] prior to accessing the electronic version through the numbered link, above. Do not attempt to file the PDF version because it is for viewing purposes only and not the entrance of any information. To prepare and file the electronic form, you must click on the form title that follows 7. at the top of this section.
You may file a Combined Declaration of Use & Incontestability under Sections 71 & 15 only if you have continuously used a mark registered on the Principal (not Supplemental) Register in commerce for five (5) consecutive years after the date of registration. You must file the Combined Declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth anniversary date). If you have NOT continuously used the mark in commerce for five (5) consecutive years, you must still file a Section 71 Declaration. You must subsequently file a Section 71 declaration, specimen, and fee on a date that falls on or between the ninth (9th) and tenth (10th)-year anniversaries of the date on which the USPTO issued the certificate of extension of protection, and each successive ten-year period thereafter (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following each ten-year period). Failure to file the required Section 71 will result in cancellation of the registration and invalidation of the extension of the international registration to the United States.
Note Regarding Incontestability: §15 Declarations for registrations issued under Section 69, 15 U.S.C. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. 15 U.S.C. §1141m. Section 73 itself does not require a separate filing, but rather only establishes the time for filing. As such, use of the §15 Declaration form is appropriate to attest to the facts regarding incontestability regardless of the original basis for registration.
Note: The owner of a registered extension of protection of an international registration to the United States must renew the international registration directly with the International Bureau (IB). Under Section 70(b) of the U.S. Trademark Act, if the international registration is not renewed, the IB will notify the USPTO that the international registration has expired. The USPTO will then update its records to cancel the corresponding extension of protection to the United States as of the expiration date of the international registration.
Note On Representation: The USPTO considers powers of attorney to end upon either (1) the date of registration; or (2) the final acceptance or denial of a required post-registration filing. Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. The filing of this form will automatically update the "Attorney of Record" and the "Correspondence Address" data fields in the USPTO's TSDR database. After submission of this form, it is not necessary to file a separate Appointment of Attorney form or Change of Correspondence Address form. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 71, the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of attorney. For more information on who may represent registrants before the USPTO, please see TMEP §§602 et seq.
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- Petition to Director to Review Denial of Certification of International Application
Use this form to file a petition to the Director specifically to review the denial of certification by the USPTO's Madrid Processing Unit of an application for international registration through the Madrid Protocol. You must specify a USPTO Reference Number/Control Number to use this form, and include as part of the submission a clear statement of the relevant facts and any evidence, if necessary, supported by a declaration, where appropriate. Please see the important information in the Petition to Review Denial of Certification of an International Application under the Madrid Protocol Information Sheet at https://www.uspto.gov/trademarks/law/madrid/Madrid_Petition_Info.jsp.