Federal Register - Madrid Protocol

[Federal Register: February 6, 2009 (Volume 74, Number 24)]
[Notices][Page 6269-6271]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]

The complete comment request is available at http://frwebgate.access.gpo.gov/cgi-bin/getdoc.cgi?dbname=2009_register&docid=fr06fe09-29

DEPARTMENT OF COMMERCE
Patent and Trademark Office
Madrid Protocol

ACTION: Proposed collection; comment request.

SUPPLEMENTARY INFORMATION:


I. Abstract

This collection of information is required by the Trademark Act of 1946, 15 U.S.C. 1051 et seq., which provides for the Federal registration of trademarks, service marks, collective trademarks and service marks, collective membership marks, and certification marks.

Individuals and businesses that use or intend to use such marks in commerce may file an application to register the marks with the United States Patent and Trademark Office (USPTO).

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (``Madrid Protocol'') is an international treaty that allows a trademark owner to seek registration in any of the participating countries by filing a single international application. The International Bureau (``IB'') of the World Intellectual Property Organization (``WIPO'') in Geneva, Switzerland, administers the international registration system. The Madrid Protocol Implementation Act of 2002amended the Trademark Act to provide that:

(1) The owner of a U.S. application or registration may seek protection of its mark in any of the participating countries by submitting a single international application to the IB through the USPTO, and
(2) the holder of an international registration may request an extension of protection of the international registration to the United States.

The Madrid Protocol became effective in the United States on November 2,2003, and is implemented under 15 U.S.C. 1141 et seq. and 37 CFR Part 2 and Part 7.

An international application submitted through the USPTO must be based on an active U.S. application or registration and must be filed by the owner of the application or registration. The USPTO reviews the international application to certify that it corresponds to the data contained in the existing U.S. application or registration before forwarding the international application to the IB. The IB then reviews the international application to determine whether the Madrid filing requirements have been met and the required fees have been paid. If the international application is unacceptable, the IB will send a notice of irregularity to the USPTO and the applicant. The applicant must respond to the irregularities to avoid abandonment, unless a response from the USPTO is required. After any irregularities are corrected and the application is accepted, the IB registers the mark, publishes the registration in the WIPO Gazette of International Marks, and sends a certificate to the holder.

When the mark is registered, the IB notifies each country designated in the application of the request for extension of protection. Once an international registration has been issued, the holder may also file subsequent designations to request an extension of protection to additional countries.

Under Section 71 of the Trademark Act, a registered extension of protection to the United States will be cancelled unless the holder of the international registration periodically files affidavits of continued use in commerce or excusable nonuse. These affidavits cannot be filed until five years after the USPTO registers an extension of protection. Since the USPTO will not be
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accepting these affidavits until February 1, 2010, the estimated burden for these affidavits will not be included in this collection at this time.

This collection includes the information necessary for the USPTO to process applications for international registration and related requests under the Madrid Protocol. The USPTO provides electronic forms for filing the Application for International Registration, Subsequent Designation, and Response to a Notice of Irregularity online through the USPTO Web site. An electronic form for the Request for Transformation is under development. Applicants may also submit the items in this collection on paper or by using the forms provided by the IB, which are available on the WIPO Web site. The IB requires Applications for International Registration and Subsequent Designations that are filed on paper to be submitted on the official IB forms.