Section 66(a) Timeline: Application based on the Madrid Protocol
Place your mouse over the steps for more information on each step.
3 months
1 month
3 months
OR
6 months
1-2 months
OR
3 months
OR
6 months
Step 1. USPTO receives Request for Extension of Protection: The World Intellectual Property Organization’s International Bureau (IB) transmits the Request for Extension of Protection (REP) to the USPTO. The actual transmission to the USPTO could be weeks or months after the applicant’s submission of the REP to its “Office of Origin.” Applicants may not request protection directly, but must file such requests through a “home country” intellectual property office.
Step 2. USPTO reviews Request for Extension of Protection: The Request for Extension of Protection is examined under the same standards as any other application for registration on the Principal Register. The USPTO examining attorney determines whether U.S. law permits registration. Filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds.
Step 3a. USPTO publishes mark: If no refusals or additional requirements are identified, the USPTO examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by the potential opposer.
Step 3b. USPTO issues letter (Office action): If refusals and/or requirements exist, the USPTO examining attorney issues a letter (Office action, referred to by the International Bureau (IB) as a Provisional Refusal) explaining the refusals and/or requirements. This letter is sent to the IB, which forwards the action to the applicant. The refusal is either “total,” meaning it applies to all goods/services/classes, or is “partial,” meaning it applies to certain goods/services/classes. Within 6 months of the date the Office action was sent to the IB (USPTO mailing date), the applicant must submit a response to the USPTO that addresses each refusal and/or requirement in a “total” refusal. If the refusal is “partial,” and the applicant does not respond within 6 months of the USPTO mailing date, the USPTO will abandon only those goods/services/classes refused and approve the mark for publication in the Official Gazette (OG).
Step 4a. Applicant timely responds: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the Office action. The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If the applicant’s response fails to satisfy any of the refusals and/or requirements, the examining attorney will issue an Office action making any remaining refusals and/or requirements “final.” An applicant may respond to a final Office action by (a) overcoming the refusals and complying with the requirements, or (b) appealing to the Trademark Trial and Appeal Board.
Step 4b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the Office action was issued in a “total” refusal, the application is abandoned. If the refusal is “partial,” and the applicant does not respond within 6 months of the USPTO mailing date, the USPTO will abandon only those goods/services/classes refused and approve the mark for publication in the Official Gazette (OG). See Step 5a USPTO publishes mark.
The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. Applications with partially abandoned goods/services/classes may petition to revive within 2 months of the date of the examiner’s amendment abandoning/deleting those goods/services/classes. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s) or designate the United States for protection again in a “Subsequent Designation” of the International Registration of the mark.
Step 5a. USPTO publishes mark: If no refusals or additional requirements are identified, the USPTO examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by the potential opposer.
Step 5b. USPTO issues final letter (Office action): The examining attorney will issue a “final” Office action directly to the applicant or applicant’s U.S. attorney. The Office action makes “final” any remaining refusals or requirements. The applicant may respond to a final Office action by (a) overcoming the refusals and complying with the requirements; (b) appealing to the Trademark Trial and Appeal Board; or (c) filing a petition to the Director in limited circumstances where review by the Director is allowed.
Step 6a. Applicant timely responds/Files appeal: To avoid abandonment of the application, the applicant must submit a timely response addressing each refusal and/or requirement stated in the “final” Office action. Alternatively, or in addition to the response, the applicant may also submit a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB). The examining attorney will review the submitted response to determine if all refusals and/or requirements have been satisfied. If the applicant’s response fails to overcome the refusals and/or satisfy the outstanding requirements, the application will be abandoned, either in “total” or in “part” if specified, unless the applicant has filed a Notice of Appeal, in which case the application is forwarded to the TTAB. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. For goods/services/classes partially abandoned after “final” refusal, such goods/services/classes are no longer part of the application.
Step 6b. Applicant does not respond and application abandons: If the applicant does not respond within 6 months from the date the “final” Office action was issued, and the action does not specifically state that certain goods/services/classes will be “allowed” (or that certain goods/services/classes will be “deleted”) if no reply is received, the entire application is abandoned. The term “abandoned” means that the application process has ended and the trademark will not register. Filing fees are not refunded when applications abandon. Abandoned applications are “dead,” since they are no longer pending or under consideration for approval. To continue the application process, the applicant must file a petition to revive the application within 2 months of the abandonment date. If more than 2 months after the abandonment date, the petition will be denied as untimely and the applicant must file a new application with the appropriate fee(s) or designate the United States for protection again in a “Subsequent Designation” of the International Registration of the mark.
Step 7a. USPTO publishes mark: If no refusals or additional requirements are identified, the USPTO examining attorney approves the mark for publication in the Official Gazette (OG). The OG, a weekly online publication, gives notice to the public that the USPTO plans to issue a registration. Approximately 1 month after approval, the mark will publish in the OG for a 30-day opposition period, which may be extended upon request by the potential opposer.
Step 7b. Applicant’s appeal sent to TTAB: If the applicant’s response does not overcome the refusals and/or satisfy all of the requirements and the applicant has filed a Notice of appeal with the Trademark Trial and Appeal Board (TTAB), the appeal will be forwarded to the TTAB. Information about the TTAB can be found online at http://www.uspto.gov/trademarks/process/appeal/index.jsp.
Step 8. Mark registers (Certificate of Extension of Protection granted): Approximately 3 months after the mark is published in the Official Gazette (OG), if no opposition was filed, then the USPTO issues a certificate of registered extension of protection, referred to as a U.S. registration. If an opposition was filed but it was unsuccessful, the registration issues after the Trademark Trial and Appeal Board terminates the opposition.
Step 9a. Owner files Section 71 declaration: Between the 5th and 6th year after the date on which the USPTO issues the U.S. registration, or within the 6-month grace period with an additional fee, the holder of the international registration must file directly with the USPTO a Section 71 Affidavit of Use or Excusable Nonuse. Failure to file this declaration will result in the cancellation of the U.S. registration. The USPTO will then notify the International Bureau of the cancellation and invalidation of protection in the United States. The holder of the international registration may again designate the United States for protection in a “Subsequent Designation” of the international registration of the mark.
Step 9b. Owner files Section 71 declaration: Within 1 year preceding the end of every 10-year anniversary of the U.S. registration, or within the 6-month grace period with an additional fee, the holder of the international registration must file directly with the USPTO a Section 71 Declaration of Use or Excusable Nonuse. Failure to make these required filings will result in cancellation of the U.S. registration. The USPTO will then notify the International Bureau of the cancellation. In addition, to the USPTO maintenance requirements, the holder must also renew the international registration with the International Bureau every 10 years from the date of international registration (http://www.wipo.int/madrid/en/filing/renewal.html). Failure to renew the international registration will result in cancellation by the International Bureau, which will notify all designated contracting parties that protection need no longer be afforded to the mark.
