APPLICATION FOR INTERNATIONAL REGISTRATION

HELP INSTRUCTIONS

 

37 C.F.R. § 7.11(a). Requirements for international application originating from the United States.

The United States Patent and Trademark Office (USPTO) will grant a date of receipt to an international application that is submitted through the Trademark Electronic Application System (TEAS) and contains all of the following:

  1. The filing date and serial number of the U.S. basic application and/or the registration date and registration number of the U.S. basic registration;

  2. The name of the international applicant that is identical to the name of the applicant or registrant as it appears in the basic application or basic registration and applicant's current address;

  3. A statement that the applicant is entitled to file an international application in the USPTO, specifying that applicant:
    (i) is a national of the United States;
    (ii) has a domicile in the United States; or
    (iii) has a real and effective industrial or commercial establishment in the United States. Where an applicant's address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment.

  4. An e-mail address for receipt of correspondence from the USPTO.

  5. A reproduction of the mark that is the same as the mark in the basic application and/or registration.

  6. A color claim as detailed in § 7.12, if appropriate;

  7. A description of the mark that is the same as the description of the mark in the basic application or registration, as appropriate;

  8. An indication of the type of mark if the mark in the basic application and/or registration is: (1) a three-dimensional mark, (2) a sound mark, (3) a collective mark, or (4) a certification mark;

  9. A list of the goods and/or services that is identical to or narrower than the list of goods and/or services in each claimed basic application or registration and classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and

  10. Fees in the nature of: (1) the USPTO certification fee, (2) the international application fees for all classes, and (3) the fees for all designated Contracting Parties identified in the international application.

Instruction Section:

Extend the time limit: The 60-minute period is not an "absolute" period; i.e., you do not have to complete the form, start to finish, within 60 minutes. If the USPTO's server does not detect any activity at all within 60 minutes, it will end your session at the 60-minute point. HOWEVER, at 54 minutes into your session, you will receive a pop-up window warning you that your session will expire in six minutes (it will actually provide the precise "end" time within the window, such as 11:29:14 EST).
  To "renew" your session, you simply need to click on the "OK" button at the bottom of the pop-up window, and you will automatically get another 60 minute time period. If you do not click on the button within the remaining six minutes of the session, your session will completely end at the 60-minute mark, and you will be returned directly to the initial form wizard to start the process again.

Form Selection:

Pre-Populated Form: The pre-populated form will automatically display the exact information that is already in the USPTO database for one specific serial number of a U.S. basic application or a U.S. basic registration number. If you do not change any data fields, the USPTO will directly submit information that must be certified to WIPO's International Bureau (IB), without independent review of this data at the USPTO. Alternatively, this form may be used where certain data fields can be changed (e.g., either narrowing the scope of the identification of goods and/or services in the U.S. basic application or registration, and/or substituting a color drawing of the mark, where the original mark is shown in the USPTO database as a black-and-white image); however, if any data field is changed, an independent review of this data will occur by the USPTO's Madrid Processing Unit before the form will be forwarded to the IB.

Free-Text Form: The free-text form must be used if: (1) the application for international registration is being based on more than one serial number of a U.S. basic application or a U.S. basic registration number; (2) data is being changed in any way other than only narrowing the scope of the identification of goods and/or services in the U.S. basic application or registration and/or substituting a color drawing of the mark, where the original mark is shown in the USPTO database as a black-and-white image; or (3) the U.S. basic application being used as the basis is not yet loaded into the Office's database at the time of filing, e.g., immediately after a U.S. application was filed. Information on this form is not automatically certified, and will not be submitted directly to the IB. Instead, the form will be routed to the USPTO's Madrid Processing Unit for review. If all elements required for certification are supplied, the form will then be forwarded to the IB.

Account at WIPO's International Bureau:

To open a current account for the settlement of fees at WIPO's International Bureau (IB), you must file a signed request for the opening of the account, together with the payment of an initial deposit. The current accounts will be kept only in Swiss francs at the headquarters of WIPO in Geneva. An initial deposit of at least 5,000 Swiss francs (CHF) is recommended. For further information on establishing an account at WIPO, see http://teasi.uspto.gov/common/wipoAccountHelp.html.

Mark Section

Standard Character Set: For entry of a mark at Option #1, the entered character(s) must appear in the USPTO accepted standard character set. From the entry made, the USPTO will create a JPG image file of the mark, required for proper processing.

Properly-Sized JPG/JPEG image file: All black-and-white jpg images and color jpg images must be scanned at no less than 300 dots per inch and no more than 350 dots per inch, and with a length and width of no less than 250 pixels and no more than 944 pixels, e.g., a valid pixel dimension is 640 X 480 pixels. To ensure your image file meets these requirements, you can use a free graphic viewer, e.g., Irfanview. If you cut-and-paste an image into Irfanview, or open an image file using the program, select "Image" from the tool bar and "Information" from the drop-down choices to view the current DPI and pixel dimensions. If your image is not in the proper dimension, you can use Irfanview to change the DPI and pixel dimensions: 1) Select "Image" from the tool bar; 2) Select "Resize" from the drop-down choices; 3) Set the DPI to 300 - 350 and change the pixel dimension to within the accepted range of 250 X 944; 4) If the new image file looks acceptable to you in the new dimensions, save the image file, by selecting "File" from the tool bar and using the "Save As" feature to save the file as a JPG image. If the image is not clear, do not submit the image. Instead, seek the assistance of a graphic artist to create the properly-sized jpg file.

Black and White: The "ideal" "black-and-white" image would consist of only two colors, namely, black and white. Unfortunately, due to limitations within the existing JPEG format, that is impossible. Instead, the "best" possible image will be a grayscale image that is as close to black and white as possible. This grayscale image can be created by image editors that will save the image in 8-bit JPEG, which eliminates all color elements from the JPEG image. When scanning your image file, you should confirm that the settings on your scanner are set to create a black-and-white or grayscale JPEG, not a color image. If you submit a black-and-white or grayscale image that has colors associated with it, WIPO will reject the image and you will receive an irregularity on your application. To decrease the color depth in an existing JPEG image to only grayscale (and as close to pure "black-and-white" as possible), you can use a free graphic viewer, e.g., Irfanview. If you copy-and-paste an image into Irfanview, you can decrease the color depth to two colors by following these steps: 1) Select "Image" from the tool bar; 2) Select "Decrease Color Depth" from the drop-down menu; 3) Select "2 colors, black and white;" 4) Click "ok;" 5) Confirm view of image as a pure black and white image; 6) Select "File" from the tool bar and select "Save As;" 7) Select "Save as grayscale JPEG" that appears in a popup window titled "JPEG/GIF save options"; 8) Save the image as a JPEG; and 9) Attach this image to your application as your proper black-and-white mark image. If you are not able to reproduce your mark as a pure black-and-white image, you should seek the assistance of a graphic artist. NOTE: The form will "reject" a "black-and-white" image that has colors associated with it. Black-and-white images with a color claim are acceptable, but drawings that are lined for color are not; you must submit an actual color image

Standard Character Format: If you have attached your own JPG file of your mark, because it consisted of characters within the group of 90 characters for which TEAS currently cannot create the required jpg file, you must click on this box to indicate that a claim to the standard character format is being made; i.e., that the mark is presented without claim to any particular font, style, size or color.

Mark Description: Enter the appropriate description of the mark, e.g., "A stylized letter C." If a color mark, you should list the portions of the mark that are in color and the corresponding color for each, e.g., "A bird with a blue body, a red head, and a yellow beak." Do not enter any USPTO design search codes or their descriptions in the mark description field, e.g., silhouettes of men is coded 02.01.02.

Parts of the mark in color: List the portions of the mark that are in color and the corresponding color for each, e.g., "A bird with a blue body, a red head, and a yellow beak." This statement need not duplicate the mark description but must identify the principal parts of the mark that are in each color.

Color(s) in the mark: List here only the actual color(s) appearing within the mark. For example, a proper entry may consist of the single word "green," or multiple colors, such as "red, blue, and yellow." No other information should be provided.

Uploaded Color Image: If you have uploaded a color image, but do not wish to proceed with that color image, you must return to the Wizard page and answer "No" to Question #1. When you return to the Mark section, your original image from the USPTO database will then be displayed.

Additional Statement:

Answer YES if you need to make of record one of the following statements:

Translation: Where the mark consists of or contains words that can be translated, such a translation may be provided. The translation may be into English and/or French and/or Spanish, irrespective of the language of the international application. The International Bureau (IB) will not check the accuracy of any translation of the mark, nor will it question the absence of a translation or provide a translation of its own.

Transliteration: Enter the transliteration of any non-Latin characters in the mark. A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. E.g., if the mark consists of the Chinese character that is pronounced "Chi," you would enter "Chi" in this field.

Verbal Element: Enter the word(s) that appear within the overall composite mark (as shown in the JPG image file). E.g., if the mark consists of the design of a cat and the words THE CAT'S MEOW, you would enter in this field THE CAT'S MEOW. You would NOT enter "The design of a cat and THE CAT'S MEOW"- it is the actual image file that will show this.

Disclaim: You may enter the descriptive or generic wording found in the mark, for which no claim is being made to the exclusive right to use, apart from the mark as shown, in order to obviate a request for such a disclaimer by a designated Contracting Party. NOTE: a disclaimer is not required in the international application merely because it occurs in the basic application or is contained in the basic registration.

Goods and Services Information

International Class: Enter the international class number(s) of the goods and/or services associated with the mark for which international registration is sought. To confirm the goods/services/classes that exist in the U.S. basic application or registration, use the U.S. application serial number or registration number on the USPTO website at http://tsdr.uspto.gov/ to review the USPTO records.

Listing of Goods and/or Services: Enter the goods and/or services that are identical to or narrower than the goods and/or services identified in each claimed U.S. basic application or registration. For more information about acceptable language for the goods and/or services, see the USPTO's on-line U.S. Acceptable Identification of Goods and Services Manual (ID Manual), or WIPO's on-line Goods & Services Manager.

Fee Information

Number of Classes: This number is based on the total number of classes to be covered by the international registration. This number may exceed the highest number of classes for any particular country to which protection is extended, if there are different class totals within the application. E.g., the application may contain 4 total classes but all designated Contracting Parties may be limited to only 3 of those classes. The fee calculator will charge the fees according to the overall classes in the international registration and appropriate fees due to each country.

International Registration fees: The fees payable in connection with the filing of an international application consist of: (1) the basic fee (WIPO's fee for processing the international application) and (2) either the complimentary fee(s) or the individual fee(s), depending on the Contracting Parties designated. An additional fee is required for the submission of any color image. The calculation can be determined from the WIPO fee calculator. The total is reflected in U.S. dollars, as converted from Swiss francs. See WIPO's website at http://www.wipo.int/madrid/en/fees/ for more details.

Exchange Rate: This is the rate being used to convert Swiss francs into U.S. dollars. This rate is obtained daily and populates the form to determine the amount due at the time of filing.

USPTO Certification Fee: This $100 fee is based on the total number of classes in the international application, with each class only counting once, even if that class is claimed multiple times for different Contracting Party countries within the international application. The fee is $150 per class, rather than $100 per class, when the international application is based on more than one U.S. basic application or registration.

Total Amount: This is the total, in U.S. dollars, of the combined international registration fees and the USPTO Certification fee.

Payment Method Type: The designation of the specific method of payment for submission of the required fees to the International Bureau (IB).

IB Account Number: The number of a current account that has been opened with the International Bureau (IB).

Account Holder: The full name of the holder of the current account that has been opened with the International Bureau (IB).

Payment Reference Number: For a payment already submitted and acknowledged by WIPO, the specific payment reference number assigned to the submission.

WIPO Receipt Number: The number assigned by WIPO to confirm receipt of payment.

Total Fee Amount to be paid to IB: The total amount of fees being paid to the International Bureau (IB), in Swiss francs.

Application Information

Serial Number: Enter the U.S. serial number (eight-digit number - no letters) as the basis of this international application.

Registration Number: Enter the U.S. registration number (seven-digit number - no letters) as the basis of this international application.

Filing Date: Enter the filing date related to the U.S. serial number.

Registration Date: Enter the registration date related to the U.S. registration number.

Priority Claim Information

An international applicant may assert a priority claim for a trademark application filed in another country, prior to the filing of the international application. If recognized by the International Bureau (IB), this claim may result in an international registration date that is earlier than the date of filing of the international application.

Country of Earlier Filing: Select or enter the country wherein the earlier application was previously filed.

Application/Serial Numbers of Earlier Filing: Enter the application or serial number of the filing that is the basis for the priority claim.

Dates of Earlier Filing: Enter the filing date of the application that is the basis for the priority claim. NOTE: In accordance with Article 4(c)(3) of the Paris Convention, where the last day of the six-month period from the claimed priority date is a day when the Office of origin is not open for the receipt of requests to present international applications, the six-month period will, where the international registration bears the date of the receipt by the Office of origin of the said request, be extended until the first following working day at the Office of origin; similarly, where the international registration bears the date of the receipt of the international application by the International Bureau (IB), or a subsequent date, and the last day of the six-month period is a day when the IB is not open to the public, the six-month period will be extended until the first following working day at the IB.

Goods and/or Services listed in earlier filing, for which priority claimed: If the country of earlier filing is the United States, click the "Retrieve GS" button to populate Class and Goods/services data automatically. Otherwise, you must use the pull-down box to enter the number of classes you wish to add, and then click on the "Add Classes" button.

Number of Classes to be added: If you are not using the "Retrieve GS" button (because the country of earlier filing is not the United States), you must use the pull-down box to enter the number of classes you wish to add, and then click on the "Add Classes" button.

Six month priority period: In accordance with Article 4(c)(3) of the Paris Convention, where the last day of the six-month period from the claimed priority date is a day when the Office of origin is not open for the receipt of requests to present international applications, the six-month period will, where the international registration bears the date of the receipt by the Office of origin of the said request, be extended until the first following working day at the Office of origin; similarly, where the international registration bears the date of the receipt of the international application by the International Bureau (IB), or a subsequent date, and the last day of the six-month period is a day when the IB is not open to the public, the six-month period will be extended until the first following working day at the IB.

Delete Class: If you indicated that you wished to enter goods and/or services manually (because the country of earlier filing was not to be the United States), but do not wish to do so now, you must click on the box under the "Delete Class" column to remove that entry.

Class Code: Specify through the pull-down box the proper international class number associated with the identification of goods and/or services.

Goods and/or Services: Enter the goods and/or services corresponding to the selected international classification code as listed within the earlier-filed application that is the basis of the priority claim.

Applicant Information

Name: Enter the full name of the applicant, i.e., the name of the individual, corporation, partnership, or other entity that owns the mark. If the applicant is an individual, please list as LAST NAME, FIRST NAME, MIDDLE INITIAL/NAME, e.g., Smith, John A.

Street Address: Enter the applicant street address.

Internal Address: Enter the applicant internal address; e.g. Suite 200, or Room 10G3.

City: Enter the city in which the applicant is located.

State: Select the proper state from the options in the pull-down box. Otherwise, enter the information in the designated box.

Country: Select the proper country from the options in the pull-down box. If the country is not listed, enter the information in the designated box.

Zip/Postal Code: Enter the U.S. zip code or foreign country postal identification code of the applicant.

Phone Number: Enter the applicant telephone number.

Fax Number: If available, enter the applicant fax number.

Internet/E-Mail Address: Enter the applicant e-mail address.

Individual: Select the applicant's country of citizenship.

Corporation: Select the applicant's state of incorporation. If the holder is a foreign (non-U.S.) corporation, select the holder's country of incorporation.

Partnership: Select the U.S. state under whose laws the partnership is organized. If the partnership is a foreign (non-U.S.) partnership, select the country under whose laws the partnership is organized.

Limited Partnership: Select the U.S. state under whose laws the limited partnership is organized (or select country if the limited partnership is a foreign partnership).

Limited Liability Company: Select the state under whose laws the limited liability company is organized (or select the country if the limited liability company is a foreign limited liability company).

Joint Venture: Select the U.S. state or country where the joint venture is legally organized.

Sole Proprietorship: Select the U.S. state or country where the sole proprietorship is legally organized.

Trust: Select the U.S. state or country where the trust is legally organized.

Estate: Select the U.S. state or country where the estate is legally organized.

Other Entity Type: Select the entity type of the holder(s) (e.g., chartered bank, federal agency, limited liability partnership, etc.) from the descriptions provided, or enter a description in the "Other" field. If a U.S. entity, select the U.S. state from the pull-down box. If a foreign (non-U.S.) entity or if a U.S. federal entity, select the appropriate country from the pull-down box.

Attorney/Representative Information

The applicant or holder may appoint an attorney or representative to act on his behalf before the International Bureau (IB). This may or may not be the same representative whom he uses before the United States Patent and Trademark Office (USPTO). The IB will recognize only one representative in respect of a given international application or registration. Where a document in which a representative is appointed indicates the names of more than one representative, only the one indicated first will be considered to have been appointed. Where however a partnership or firm of attorneys or patent or trademark agents has been indicated, this will be regarded as a single representative. Where the requirements concerning the address of the representative are not fulfilled, the IB will treat the appointment as if it had not been made and will so inform the applicant or holder, the purported representative and, where the appointment has been transmitted by the USPTO, that Office. Where the appointment is not acceptable, the IB will send all relevant communications to the applicant or holder himself.

Attorney/Representative Name: Enter the name of the Attorney/Representative who is responsible for the filing of the application and to whom correspondence should be addressed. You may list more than one name in this field; however, correspondence will only be sent to the first listed name.

Firm Name: Enter the name of the law firm or agency with which the Attorney/Representative is associated.

Street Address: Enter the correspondence street address.

Internal Address: Enter the correspondence internal address.

City: Enter the city in which the Attorney/Representative is located.

State: If a U.S. state, enter that state by clicking on the proper entry in the pull-down box. Otherwise, enter the information in the designated box.

Country: Enter the country by clicking on the proper entry in the pull-down box. If the country is not listed, enter the information in the designated box.

Zip/Postal Code: Enter the U.S. zip code or foreign country postal identification code.

Phone Number: Enter the Attorney/Representative telephone number.

Fax Number: If available, enter the Attorney/Representative fax number.

Internet/E-Mail Address: Enter the Attorney/Representative e-mail address.

Entitlement Information

National of the United States: (1) a citizen of the United States; or (2) a person who, though not a citizen of the United States, owes permanent allegiance to the United States.

Street Address: Enter the U.S. street address for the applicant's domicile or commercial establishment.

Internal Address: Enter the U.S. internal address for the applicant's domicile or commercial establishment.

City: Enter the U.S. city for the applicant's domicile or commercial establishment.

State: Enter the U.S. state for the applicant's domicile or commercial establishment.

Country: Enter the country for the applicant's domicile or commercial establishment.

Zip/Postal Code: Enter the U.S. zip code for the applicant's domicile or commercial establishment.

Joint Applicants: If the U.S. basic application or registration is owned by more than one party (i.e., owned by joint applicants or registrants), the international application must identify those same parties as joint applicants.

Exclusions and Limitations

Exclusion of a Class: An exclusion of the goods and/or services in a class removes the class from the international application. The USPTO does not send the goods and/or services information for the excluded class to the International Bureau (IB), and no subsequent designation of this class will be possible. A new international application may be filed in the future to extend protection of the excluded class, so long as the U.S. basic application or registration is maintained.

Limitation: A limitation allows you to request protection of the mark in specifically designated Contracting Parties for less than all of the goods/services/classes that will be covered by the international registration. The applicant may request a limitation of the list of goods and/or services, which may affect some or all of the designated Contracting Parties. This does NOT remove the goods and/or services from the international application or affect their ability to be assigned in a subsequent designation. The sole effect is that the international registration does not extend a request for protection for the goods and/or services concerned into the Contracting Parties identified in the application. The goods and/or services will still be examined by the International Bureau (IB), and, if accepted, published in the International Gazette as part of the international registration. They may be subsequently designated at any time after issuance of the international registration.

Total Limitation: In a "total limitation," the entire list of goods and/or services for a particular class or classes is not extended into some or all designated Contracting Parties in the international application. The class or classes will remain part of the international registration and may be subsequently designated at a later time to any Contracting Party.

Partial Limitation: A "partial limitation" is a narrowed list of goods and/or services for a particular class which are extended into some or all designated Contracting Parties in the international application. The listing of goods and/or services in a "partial limitation" is the only goods and/or services for which protection is being sought in the designated Contracting Parties.