Transcript 37 CFR 7 - Houston Intellectual Property Law Association

Implementing the Madrid
Protocol in the United States
The USPTO Blueprint
The Madrid Protocol
First - Some Observations
Madrid Protocol: Basics
 It is not a “one-stop” international
registration system, but,
 It offers:
 One stop filing,
 Filing in English, and,
 Payment of fees,
 All at the USPTO
Madrid Protocol: Basics
 It offers cheaper and easier maintenance,
because,
 Renewals, assignments, and other
maintenance activities are done through
WIPO with a single filing for all
extensions of protection
Madrid Protocol: Basics
 Trademark owners obtain a bundle of
national rights in member countries
consistent with registering directly in
the country
 Rights are dependent on a basic
application or registration for five
years, but,
 Transformation to a national application
is possible
Representatives
 Incoming REP will be received electronically
from WIPO, not from applicant or their
representative
 CFR §10.14 governs who can appear before
the USPTO — most Protocol applicants will
require U.S. counsel if there is a refusal
 USPTO currently issues refusals in
approximately 75-80% of filed applications
“Flood” of Work?
Activities by Year
Office
1999
2000
2001
WIPO Registrations1
20,072
22,968
23,958
USPTO Registrations
104,324
127,794
124,5022
USPTO Applications
295,165
375,428
296,388
1. WIPO applications normally register within a few days — filing and
registration levels are similar.
2. In 2002 the USPTO registrations were 164,457 and applications were
258,873.
“Flood” of Work?
Applications/Registrations in the United States
Country
1999
2000
2001
Germany
6,307/1,393
10,218/2,255
9,474/3,691
France
3,695/ 943
4,860/1,402
4,636/2,063
United Kingdom
5,056/1,108
9,367/1,531
7,860/2,260
Japan
3,028/1,034
4,273/1,173
9,008/1,585
International Registrations at WIPO
Germany
5,841
6,049
5,753
France
3,776
3,950
3,689
United Kingdom
296
457
561
Japan
N.A.
144
261
International Registrations:
From Non-Agreement Countries Joining the Protocol
Country
1999
2000
2001
Great
Britain
296
457
561
Japan
N.A.
144
261
Australia
N.A
N.A.
31
Filings and REP: 2001
In Non-Agreement Countries Joining the Protocol
Country
Great Britain
(Joined 1996)
Japan
(Joined 2000)
Australia
(Joined 2001)
United States
(Nov. 2003)
Filings
Foreign
Filings
REP
85,570
24,591
10,151
145,834
21,473
5,734
71,496
29,523
884
292,464
41,244
N.A.
The Basics on Basis
44 vs. 66
Paris Convention:
 Basis: application or
Madrid Protocol:
 Basis: International
registration based on
registration in home
application or registration
country
in country of origin
 Registration in home
 International registration
country to register in U.S.
at WIPO to register in U.S.
 No dependency after
 Five year dependency on
registration
basic application or
registration in country of
origin
44 vs. 66
Paris Convention
Madrid Protocol
 Bona fide intent to use
 Bona fide intent to use
statement required
when filed in U.S.
 No use prior to
registration
 Examination: refusals
on all grounds applied
to domestic
applications, including
G/S identifications
statement required for
REP to U.S.
 No use prior to grant of
extension of protection
 Examination: refusals
on all grounds applied
to domestic
applications, including
G/S identifications
44 vs. 66: Post Registration
Paris Convention
Madrid Protocol
 Affidavit of continued use
 Affidavit of continued
required, year 6 and
every 10 years
 Renewal at USPTO
 Home country registration
expires — registration
continues contingent on
use and renewal at
USPTO
use required, year 6 and
every 10 years
 Renewal at WIPO
 International registration
expires — extension of
protection expires
Rules of Practice
General Approach:
 Keep rules simple
 Implement rules that clarify how to
work with the USPTO
 Don’t include rules addressing WIPO
processes or procedures
 Ensure that rules are consistent with
Trademark e-government processes
Result:
 Proposed rules do not address
requirements that the Protocol imposes
on the USPTO or transactions between
the USPTO and WIPO
 Thus, there are requirements in the
Protocol that are not addressed in the
proposed rules, e.g., all grounds for
refusal (by USPTO) must be raised in
first 18 months
Background
 Proposed rules published in the Federal
Register on March 28th, 2003
 New Part 7 focused on:


The filing and processing of an
international application, and,
Processing of requests for extension of
protection
 Part 2 changes are proposed to
“harmonize” USPTO processes
Background
 The proposed regulations implement the
Madrid Protocol Implementation Act of 2002,
Pub. Law 107-273, 116 Stat. 1758, 1913-1921
(MPIA) signed on November 2, 2002
 The MPIA states that the Protocol will come
into force on the later of 1 year after signature
(11/02/03) or 3 months after deposit of the
ratification documents with WIPO
 The current plan is to implement and begin
processing on November 2, 2003 (a Sunday).
New Part 7 Rules
International Applications
The Process from the Point of
View of the U.S. trademark owner
seeking International Registration
Date of Receipt of the International
Application
 Date of receipt will become the date of
International Registration if the USPTO
transmits to WIPO within 2 months and the
application is formal
 §7.11 sets out the U.S. requirements for an
International Application filed at USPTO
 If the requirements are not met, the
application will not be processed by the
USPTO
§7.11(a) - International Application
Filing Requirements
 Filed through TEAS
 Drawing
 Basic application and  Color claim*
its filing date or
 Description of the
registration number
and registration date
 Name and address
of the applicant
mark*
 Type of mark*
*If appropriate
§7.11(a) - International Application
Filing Requirements
 Classified list of
goods or services
that is the same as
or less than the
goods or services in
basic application or
registration
 Designations for
extensions of
protection
 Indication of
entitlement to file
 E-mail address
 All fees
Entitlement to File
 To file an international application at
the USPTO, the trademark owner must
either be:
 (1) domiciled in;
 (2) be a national of; or,
 (3) have a real and effective industrial or
commercial establishment in the U.S.
Real and Effective Commercial or
Industrial Establishment - Cases
 Ex Parte Blum, 138 USPQ 316 (Commissioner
of Patents 1963): Licensing not sufficient
 In re Aktiebolaget Electrolux, 182 USPQ 255
(TTAB 1974): Registrations owned by
subsidiary in country of origin does not mean
out-of-country parent can file
 In re International Barrier, 231 USPQ 310
(TTAB 1986): Mere incorporation does not
create right to file
Priority Claims
 The international application may contain
a Paris Convention priority claim
 Must meet Paris Convention
requirements:


Based on first filed application, and,
Claimed within six months of the filing date
Priority Claims
 For the priority claim to survive, the
USPTO must transmit international
application either:


Within 2 months of receipt of the request
for international application, or
Within the 6 month priority period
 Usually, a priority claim will be based
on the underlying U.S. basic application
The USPTO Electronic International
Application Form (1)
 When an international application is
based on one U.S. application or
registration, the electronic form will
“pre-populate” the form with the
information that must be certified by the
USPTO
 Thus, certification of international
application will be done without manual
review by the USPTO
The USPTO Electronic International
Application Form (2)
 Where applicant uses more than one
basic application or registration as the
basis for the international application –
the applicant will be required to
complete the entire electronic form
 Certification will be done manually by
the Madrid Processing Unit (MPU)
The Certification Process
 Where applicant has:



Edited goods,
Added a color drawing, or
Used more than one U.S. application or
registration as the basis of its international
application,
 The MPU will do a side-by-side comparison of
USPTO records against data in the
international application form
Who owns the U.S. Basic Application
or Registration?
 Disconnect between the assignment
system and the TRAM database
 If the international applicant finds the
old owner’s name in the international
application, what happens?
 Applicant fills out application form (2)
and the Madrid Processing Unit (MPU)
will check ownership against the
trademark assignment database
Drawing Issues: COLOR
 If color is claimed as a feature of the
mark in the basic application or
registration, the international applicant
must attach a color drawing to its
international application.
 Past practice for “claims” of color meant
that the drawing was lined for color and
no specific disclaimer of color was
made.
Other Drawing Issues
 What if the drawing in the USPTO data
base is not “good enough” for the
international application?
 Applicant may attach a new drawing to
the international application. It must
match the drawing in the basic
application or registration.
Irregularities - §7.14(b)
 When the international application fails
the formalities examination at WIPO,
what happens?
 If the informality concerns classification
or the identification of goods or
services, the response to the informality
should be filed through the USPTO at
least one month before end of response
period §7.14(d)
Irregularities - §7.14(b)
 The international applicant must respond to
an ID or classification irregularity through the
TEAS system using a special TEAS form
 If revised goods are proposed in the
irregularity response, the Office will certify the
scope of the revised goods
 Other responses must be made directly with
the IB
 No U.S. fees for irregularity processing
U.S. Processing Fees - §7.6
 For certifying an international
application based on a single U.S.
application or registration:
$100 per class
 For certifying an international
application based on multiple U.S.
applications or registrations:
$150 per class
Calculating Processing Fees
 International application based on a
single 5 class U.S. application or
registration (classes 1, 2, 3, 4,and 5)



3 classes extended to France (1,2,3)
2 classes extended to Italy (1 and 4)
Certification fee per class = $100
Total certification fee = $400 (4 x $100)
Calculating Processing Fees
 International application based on 1 U.S.
application (classes 1, 2, 3 and 4) and 1
registration (classes 9 and 15)




2 classes extended to France (1, 2)
4 classes extended to Germany (1, 5 , 9, 15)
2 classes extended to U.K. (1, 2)
Certification fee = $150 per class
Total certification fee = $750 (5 x $150)
Other Processing Fees
 Transmitting a request to record an assign-
ment or restriction § § 7.23, 7.24 - $100
 Filing a notice of replacement, §7.28 - $100
per class
 Affidavits under §71of the Act - $100 per
class
 Transmitting a subsequent designation $100
Fees for International Filings
 Fees may be paid directly to WIPO in
Swiss Francs (CHF), or,
 Electronically at USPTO web site in U.S.
dollars using a fee calculator
 The USPTO fee calculator will use the
WIPO fee schedule, and will apply a
current dollar/CHF exchange rate to all
fees that will be forwarded to WIPO
Fees for International Filings
 Fees owed to WIPO for international
filings may vary from time-to-time
depending on fluctuations in exchange
rates.
 The fee calculator on the USPTO web
site will show the fees and the
calculations for the fees
Sample International Filing
Fees1
 REP to Benelux, United Kingdom, Italy,
Japan, France, Germany: One class:
1,829 CHF or $1,382; Two classes:
2,191 CHF or $1,585
 REP in One class to all countries: 8,585
CHF or $6,210
 REP to all countries, all classes, color
mark: 92,470 CHF or $66,891
1
Includes all fees related to international application and all REP fees but no U.S. fees
Subsequent Designations:
§7.21
 May be made through WIPO or the
USPTO
 There will be a U.S. transmittal fee plus
the fees set by the Protocol for
subsequent designation(s).
 Irregularities in the subsequent
designation must be corrected directly
with WIPO.
The International
Registration
General Principles concerning
changes to the International
Registration
Changes to the International
Registration – General Principle
 The extension of protection to the
United States is part of the international
registration, therefore changes must be
recorded at WIPO
 Section 10 of the Trademark Act and
Part 3 of the CFR do not apply to
assignments and restrictions affecting
extensions of protection to the U.S.
Changes to the International
Registration §7.22
 With few exceptions, all requests to
record changes to the international
registration must be made directly with
WIPO
 This means that assignments, security
interests and other restrictions of the
right of disposal of the extension of
protection to the United States must be
made at WIPO
Changes to the International
Registration: The Process
 WIPO will notify the USPTO of changes to
ownership or right of disposal affecting
the international registration
 USPTO will “record” these changes
 Note: the assignment database will:



Soon be available on the USPTO web site,
Will automatically update TRAM, and,
Trademark assignments may now be filed
electronically using ETAS
Exceptions to the General Principle
Concerning Changes §7.23
 Assignee cannot obtain the assignor’s (holder’s)
signature on the request to record the
assignment
 Assignee must be a U.S. citizen or be domiciled
or have a real and effective industrial or
commercial establishment in the U.S.
 Request to record the assignment must include
a single transmittal fee and the fees due to the
International Bureau for recording the
assignment
Request to Record a Security
Interest or other Restriction- §7.24
 The restriction is the result of an agreement
made between the holder of the international
registration and another party
 The signature of the holder cannot be obtained
on the request to record
 The party who has obtained the restriction must
be a U.S. citizen or be domiciled, or have a real
and effective industrial or commercial
establishment in the U.S.
Request to Record a Security Interest
or other Restriction (continued)
 Request to record the restriction must
be accompanied by a transmittal fee and
the fees due to WIPO for recording the
restriction
 If the request does not meet the
requirements of §7.24, USPTO will not
forward the document, and,
 USPTO will notify requestor and return
fees
Requests for Extension of
Protection
Processes and procedures in the
USPTO
Request for Extension of
Protection (REP)
 Will come to USPTO as e-applications
 Will be loaded into database along with
all other U.S. applications (after design
codes, mark drawing codes are added)
 Most Part 2 rules will apply to the
examination of requests for extension of
protection
REP – A Few Facts
 REP is an “application” with a §66(a) basis
 REP may contain a claim of priority
 Applicants may not make preliminary
amendments to the REP by filing them at
the USPTO
 Preliminary amendments should be made at
WIPO
 The REP can only be restricted or changed
by the USPTO during the course of
examination
REP – A Few Facts
 REP may only be registered on the
Principal Register. (See: §68 of the
Trademark Act)
 REP will be examined like any regularly
filed U.S. trademark application – the
same ID and classification rules will
apply
Replacement - §7.28 (1)
 §74 of the MPIA provides:
When a United States registration and a
subsequently issued certificate of extension of
protection to the United States are owned by the
same person, identify the same mark and list the
same goods or services the extension of
protection shall have the same rights that accrued
to the registration prior to the issuance of the
certificate of extension of protection
 This provision conveys prior registration rights
to the extension of protection by operation of
law
Replacement - §7.28 (2)
 §7.28 provides a means for the USPTO to
note the relationship between the
certificate of extension of protection and
the prior U.S. registration
 A simple electronic form will be used to
note replacement
 This form will enter a notation in the
USPTO’s electronic records of the
number of the prior U.S. registration
Effect of Replacement - §7.29
 The “replaced” registration will remain in
effect until it is cancelled or expired
 Registrant may choose to maintain the
“replaced” U.S. registration
 The registered extension of protection
shall have the same rights as the
“replaced” U.S. registration
Cancellation or Expiration of the
International Registration - §7.30
 With one exception, when the
international registration is cancelled, in
whole or in part, the corresponding
extension of protection is cancelled, in
whole or in part.
 This rule pertains for the life of the
extension of protection
Transformation - §7.31
 When the international registration is
cancelled in whole or in part as the
result of a cancellation of the basic
application or registration in an action
that began in the first five years after
international registration, the
international registrant may “transform”
its U.S. extension of protection:
IF
Transformation - §7.31
 Holder of the international registration
files a TEAS request to transform within
3 months of the date of cancellation of
the international registration, and,
 Request includes pertinent data and new
application filing fee
 Except for deletion of goods, no other
amendments can be made with the
transformation form
Transformation - §7.31
 The new U.S. application will retain the
same filing date and same priority as the
prior extension of protection
 The holder of the international
application must claim and perfect a new
basis
 If a registered extension of protection is
“transformed” it will be put back into
application status and given a new serial
number
Post Registration Matters
 Any request to renew an international
registration must be made at WIPO.
 Renewal requires only a request and
payment of the fee
 Thus, extension requests — as part of
the international registration — are
renewed at the IB
 The renewal period is 10 years from the
date of the international registration
Post Registration Issues
Affidavits of Use - §7.36
 Extensions of Protection will require
affidavits of use under §71 of the Act
 These affidavits 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 U.S. of the
extension of protection — not from the
international registration date at WIPO
Affidavits of Use - §7.36
 The time periods reflected in §71 and the
rules reflect the pre-TLT post registration
time periods for filing
 There will be no need to file any of these
affidavits until 2009 or later
 USPTO will propose a technical
correction to harmonize these post
registration time periods with TLT
periods before 2009
Division of Registrations
 USPTO practice will change to allow the
division of registrations — just as USPTO
now divides applications
 There will be no 2(d) examination when
a registration is divided
 In some cases, divided registrations may
be merged again at a later date
Changes to 37 CFR Part 2
THAT’S RIGHT FOLKS – More Changes
Basis
 §2.33 is amended to add a new basis for filing
and registration — §66(a) — and to state that
the verified statement of intent to use is part
of the international application on file at WIPO
 §2.35(a) is amended to state that applications
under §66(a) basis cannot add, delete or
substitute a basis (except when
transformation occurs)
 §2.34(b) states that the §66(a) basis cannot
be added to any application
Drawing Issues:
Some Part 2 Changes
 §§2.52, 2.53 and 2.54 have been extensively
revised to deal with color drawings and the
new drawing requirements
 As of November 2, 2003, the USPTO will
accept color drawing for all applications
 New §2.52(b)(1) provides that if color is
claimed as a feature of the mark, the drawing
must be submitted in color
 All lines must be clean, sharp and solid, not
fine or crowded, and produce a high quality
image when
Drawing Issues:
Some Part 2 Changes
 E-drawings must be in .jpg format and
scanned at no less than 300 dots per
inch and no more than 350 dots per
inch with a length and width of no less
than 250 pixels and no more than 944
pixels.
Color - §2.52
 If the application claims color as
part of the mark, the drawing
must be in color
 If no color is claimed the drawing
must be in black and white
 Drawings with gray tones will be
published as black and white
drawings unless applicant claims
the color gray
§2.52(a) - Drawing Issues
What is a “Standard Character” Mark?
 “Standard character” replaces the term
“typed drawing”
 A claim that the mark is in standard
characters must be made by applicant
 Letters must be Latin characters
 Numerals must be Roman or Arabic
characters
§2.52(a) - Drawing Issues
What is a “Standard Character” Mark?
 The final rules will have attached a
table of acceptable standard
characters.
 If the E-TEAS system rejects a drawing
that the applicant believes is in
standard characters, the applicant can
attach a JPG of the proposed mark
Partial Abandonment - §2.65
 If a refusal or requirement is expressly
limited to certain goods or services, and
applicant does not respond, the application
will be abandoned only as to those goods or
services
 This change comports with the requirements
under §68(c) and §69(a) of the Trademark
Act as amended by the MPIA
Petition Practice - §2.66, §2.146
 The time period for filing petitions to revive
abandoned applications under §2.66 and for
petitions to the Commissioner under §2.146
will be 2 months
 The rules establish a period of 6 months for
“due diligence” for petitions filed under both
§ 2.66 and § 2.146
TTAB Changes
 Note: changes have been proposed to
TTAB practice that have not been
included in this presentation
 Comments today only cover the
opposition period and filing procedures
for extensions of time and oppositions
 Electronic System for Trademark Trials
and Appeals (ESTTA)-a new way to file
TTAB Opposition Practice
Non-66(a) Opposition
 All filings: ESTTA or
paper
 Extensions: 150 days
 Opposition period ends
180 days after
publication
 Pleadings may be
amended and grounds
may be added after 180
days
66(a) Opposition
 All Filings: ESTTA only
 Extensions: 150 days
 Opposition period ends
180 days after
publication
 Pleadings may be
amended, but grounds
may not be added after
180 days
TTAB Opposition Practice
Non-66(a) Opposition
 ESTTA filings: Fees
for all named party
opposers and classes
opposed must be
paid with filing
 Paper filings: Fees for
at least one opposer
in one class must be
paid
66(a) Opposition
 ESTTA filings: Fees
for all named party
opposers and classes
opposed must be
paid with filing
 No paper filings
Sources of Information
 www.wipo.int
 www.uspto.gov
 www.thomas.loc.gov
The End!
Thanks