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MADRID PROTOCOL FORMS

Note: All Filers should check Current Server Status and Planned Outages before beginning the application process.

1. 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.

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.

 

2. 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.

 

3. 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.

 

4. 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.

 

5. 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, the domestic application filing fee for at least one class of goods or services (currently $325), and an email address for receipt of USPTO correspondence. For further information on transformation, see TMEP �1904.09 et seq.

NOTE: To submit the required maintenance filings under Section 71 for a registered extension of protection (Madrid Protocol), see Form #9 in the overall category "REGISTRATION MAINTENANCE/RENEWAL FORMS" on the TEAS front page.

 
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