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PART
7-RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
Subpart A-General lnformation
Sec.
7.1 Definitions of terms as used in this part. 7.2 [Reserved]
7.3 Correspondence must be in English. 7.4 Receipt of correspondence.
7.5 [Reserved]
7.6 Schedule of U.S. process fees.
7.7 Payments of fees to International Bureau.
Subpart B-International Application Originating From The United
States
7.11 Requirements for international application originating
from the United States.
7.12 Claim of color.
7.13 Certification of international application.
7.14 Correcting
irregularities in international application.
Subpart C-Subsequent Designation Submitted Through the Office
7.21 Subsequent designation.
Subpart D-Recording Changes to International Registration
7.22 Recording changes to international registration.
7.23 Requests for recording assignments at the International Bureau.
7.24 Requests to record security interest or othe r restriction of holder's
rights of disposal or release of such restriction submitted through the
Office.
Subpart E-Extension of Protection to the United States
7.25 Sections of part 2 applicable to extension of protection.
7.26 Filing date of extension of protection for purposes of examination
in the Office.
7.27 Priority claim of extension of protection for purposes of examination
in the Office.
7.28 Replacement of U.S. registration by registered extension of protection.
7.29 Effect ofreplacement on U.S. registration.
7.30 Effect of cancellation or expiration of international registration.
7.31 Requirements for transformation of an extension of protection to
the United States into a U.S. application.
Subpart F-Affidavit Under Section 71 of the Act for Extension
of Protection to the United States
7.36 Affidavit or declaration of use in commerce or excusable
nonuse required to avoid cancellation of an extension of protection to
the United States.
7.37 Requirements for a complete affidavit or declaration of use in commerce
or excusable nonuse.
7.38 Notice to holder of extension of protection.
7.39 Acknowledgment of receipt of affidavit or declaration of use in commerce
or excusable nonuse.
7.40 Petition to Director to review refusal.
Subpart G-Renewal of International Registration and Extension
of Protection
7.41 Renewal of international registration
and extension of protection.
Authority: 15 U.S.C. 1123,35 U.S.C. 2, unless otherwise
noted.
Subpart A-General Information
§ 7.1 Definitions of terms as used in this part.
(a) the Act means the Trademark Act of 1946,60 Stat. 427, as amended,
codified in 15 U.S.C. 1051 et seq.
(b) Subsequent designation means a request for extension of protection
of an
international registration to a Contracting Party made after the International
Bureau registers the mark.
(c) The acronym TEAS means the Trademark Electronic Application System
available on-line through the Office's Web site at: www.uspto.gov.
(d) The term Office means the United States Patent and Trademark Office.
(e) All references to sections in this part refer to 37 Code of Federal
Regulations, except as otherwise stated.
§ 7.2 [Reserved]
§ 7.3 Correspondence must be in English.
International applications and registrations, requests for extension of
protection and all other related correspondence with the Office must be
in English. The Office will not process correspondence that is in a language
other than English.
§ 7.4 Receipt of correspondence.
Correspondence relating to international applications and registrations
and requests for extension of protection submitted through TEAS will be
accorded the date and time on which the complete transmission is received
in the Office based on Eastern Time. Eastern Time means eastern standard
time or eastern daylight time, as appropriate.
§ 7.5 [Reserved]
§ 7.6 Schedule of U.S. process fees.
(a) The Office requires the following process fees:
(1) For certifying an international application based on a single basic
application or registration, per class$100.00
(2) For certifying an international application based on more than one
basic application or registration, per class-$150.00
(3) For transmitting a subsequent designation under § 7.21-$100.00
(4) For transmitting a request to record an assignment or restriction,
or release of a restriction, under § 7.23 or § 7.24-$100.00
(5) For filing a notice ofreplacement under § 7.28, per class-$100.00
(6) For filing an affidavit under § 71 of the Act, per class-$100.00
(7) Surcharge for filing an affidavit under § 71 of the Act during
the grace period, per class-$100.00
(b) The fees required in paragraph (a) of this section must be paid in
U.S. dollars at the time of submission ofthe requested action. See §
2.207 of this chapter for acceptable forms of payment and § 2.208
of this chapter for payments using a deposit account established in the
Office.
§ 7.7 Payments of fees to International Bureau.
(a) The following fees may be paid either directly to the International
Bureau or through the Office:
(1) International application fees; (2) Subsequent designation fees; and
(3) Recording fee for an assignment of an international registration under
§ 7.23.
(b) The fees in paragraph (a) of this section may be paid as follows:
(1)(i) Directly to the International Bureau by debit to a current account
with the International Bureau. In this case, an applicant or holder's
submission to the Office must include the International Bureau account
number; or
(ii) Directly to the International Bureau using any other acceptable method
of payment. In this case, an applicant or holder's submission to the Office
must include the International Bureau receipt number for payment of the
fees; or
(2) Through the Office. Fees paid through the Office must be paid in U.S.
dollars at the time of submission. See § 2.207 of this chapter for
acceptable forms of payment and § 2.208 of this chapter for payments
using a deposit account established in the Office.
(c) The International Bureau fee calculator may be viewed on the Web site
of the World Intellectual Property Organization, currently available at:
http://www.wipo.int/madrid/en/.
Subpart B-International Application Originating From the United States
§ 7.11 Requirements for international application originating
from the United States.
(a) The Office will grant a date of receipt to an international application
that is submitted through TEAS and contains all of the following:
(1) The filing date and serial number of the basic application and/or
the registration date and registration number of the 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 reproduction of the mark that is the same as the mark in the basic
application and/or registration and meets the requirements of § 2.52
of this chapter. If the mark in the basic application and/or registration
is depicted in black and white and the basic application or registration
does not include a color claim, the reproduction of the mark in the international
application must be black and white. If the mark in the basic application
or registration is depicted in black and white and includes a color claim,
the international application
must include both a black and white reproduction of the mark and a color
reproduction of the mark. If the mark in the basic application and/or
registration is depicted in color, the reproduction of the mark in the
international
application must be in color;
(4) A color claim as set out in § 7.12, if appropriate;
(5) A description of the mark that is the same as the description of the
mark
in the basic application or registration, as appropriate;
(6) An indication of the type of mark if the mark in the basic application
and/ or registration is a three-dimensional mark, a sound mark, a collective
mark or a certification mark;
(7) A list ofthe 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;
(8) A list of the designated Contracting Parties. If the goods and/or
services in the international application are not the same for each designated
Contracting Party, the application must list the goods and/or services
in the international application that pertain to each designated Contracting
Party;
(9) The certification fee required by § 7.6, the international application
fees for all classes, and the fees for all designated Contracting Parties
identified in the international application (see § 7.7);
(10) A statement that the applicant is entitled to file an international
application in the Office, specifying that applicant: Is a national of
the United States; has a domicile in the United States; or 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 ofits U.S. domicile or establishment; and
(11) An e-mail address for receipt of correspondence from the Office.
(b) For requirements for certification, see § 7.13.
§7.12 Claim of color.
(a) If color is claimed as a feature of the mark in the basic application
and/ or registration, the international application must include a statement
that color is claimed as a feature of the mark and set forth the same
name(s) of the color(s) claimed in the basic application and/or registration.
(b) If color is not claimed as a feature ofthe mark in the basic application
and/
or registration, color may not be claimed as a feature of the mark in
the international application.
§ 7.13 Certification of international application.
(a) When an international application contains all the elements set forth
in § 7.11(a), the Office will certify to the International Bureau
that the information contained in the international application corresponds
to the information contained in the basic application(s) and/or basic
registration(s) at the time of certification, and will then forward the
international application to the International Bureau.
(b) When an international application does not meet the requirements of
§ 7.11(a), the Office will not certify or forward the international
application. If the international applicant paid the international application
fees (see § 7.7) through the Office, the Office will refund the international
fees. The Office will not refund the certification fee.
§7.14 Correcting irregularities in international application.
(a) Response period. Upon receipt of a notice of irregularities in an
international application from the International Bureau, the applicant
must respond to the International Bureau within the period set forth in
the notice.
(b) Classification and Identification of Goods and Services. Responses
to International Bureau notices of irregularities in the classification
or identification of goods or services in an international application
must be submitted through the Office for forwarding to the International
Bureau. The Office will review an applicant's response to a notice of
irregularities in the identification of goods or services to ensure that
the response does not identify goods or services that are broader than
the scope of the goods or services in the basic application or registration.
(c) Fees. Ifthe International Bureau notice of irregularities requires
the payment of fees, the fees for correcting irregularities in the international
application must be paid directly to the International Bureau.
(d) Other Irregularities Requiring Response from Applicant. Except for
responses to irregularities mentioned in paragraph (b) of this section
and payment of fees for correcting irregularities mentioned in paragraph
(c) of this section, all other responses may be submitted through the
Office in accordance with § 7.14(e), or filed directly at the International
Bureau. The Office will forward timely responses to the International
Bureau, but will not review the responses or respond to any irregularities
on behalf of the international applicant.
(e) Procedure for response. An international applicant submitting a response
to the International Bureau through the Office must use TEAS. To be considered
timely, a response must be received by the International Bureau before
the end of the response period set forth in the International Bureau notice.
Receipt in the Office does not fulfill this requirement. Any response
submitted through the Office for forwarding to the International Bureau
should be submitted as soon as possible, but at least one month before
the end of the response period in the International Bureau's notice. The
Office will not process any response submitted to the Office after the
IB response deadline.
Subpart C-Subsequent Designation Submitted Through
the Office
§ 7.21 Subsequent designation.
(a) A subsequent designation may be filed directly with the International
Bureau, or, if it meets the requirements of paragraph (b) of this section,
submitted through the Office.
(b) The date of receipt in the Office of a subsequent designation is the
date that the subsequent designation is submitted through TEAS, if it
contains all of the following:
(1) The international registration number;
(2) The serial number of the U.S. application or registration number of
the U.S. registration that formed the basis of the international registration;
(3) The name and address of the holder of the international registration;
(4) A statement that the holder is entitled to file a subsequent designation
in the Office, specifying that holder: Is a national of the United States;
has a domicile in the United States; or has a real and effective industrial
or commercial establishment in the United States. Where a holder's address
is not in the United States, the holder must provide the address of its
u.S. domicile or establishment;
(5) A list of goods and/or services that is identical to or narrower than
the list of goods and/or services in the international registration;
(6) A list of the designated Contracting Parties. If the goods and/or
services in the subsequent designation are not the same for each designated
Contracting Party, the holder must list the goods and/or services covered
by the subsequent designation that pertain to each designated Contracting
Party;
(7) The U.S. transmittal fee required by § 7.6 and the subsequent
designation fees (see § 7.7); and
(8) An e-mail address for receipt of correspondence from the Office.
(c) If the subsequent designation is accorded a date of receipt, the Office
will then forward the subsequent designation to the International Bureau.
(d) If the subsequent designation fails to contain all the elements set
forth in
paragraph (b) of this section, the Office will not forward the subsequent
designation to the International Bureau. The Office will notify the holder
of the reason(s). If the holder paid the subsequent designation fees (see
§ 7.7) through the Office, the Office will refund the subsequent
designation fees. The Office will not refund the transmittal fee.
(e) Correspondence to correct any irregularities in a subsequent designation
must be made directly with the International Bureau.
Subpart D-Recording Changes to International Registration
§ 7.22 Recording changes to international registration.
Except as provided in §§ 7.23 and 7.24, requests to record changes
to an international registration must be filed with the International
Bureau. If a request to record an assignment or restriction of a holder's
right of disposal of an international registration or the release of such
a restriction meets the requirements of § 7.23 or 7.24, the Office
will forward the request to the International Bureau. Section 10 of the
Act and part 3 of this chapter are not applicable to assignments or restrictions
of international registrations.
§ 7.23 Requests for recording assignments at the International Bureau.
A request to record an assignment of an international registration may
be submitted through the Office for forwarding to the International Bureau
only if the assignee cannot obtain the assignor's signature for the request
to record the assignment.
(a) A request to record an assignment submitted through the Office must
include all of the following:
(1) The international registration number;
(2) The name and address of the holder of the international registration;
(3) The name and address of the assignee of the international registration;
(4) A statement that the assignee: Is a national of the United States;
has a domicile in the United States; or has a real and effective industrial
or
commercial establishment in the United States. Where an assignee's address
is not in the United States, the assignee must provide the address of
its u.s. domicile or establishment;
(5) A statement that the assignee could not obtain the assignor's signature
for the request to record the assignment;
(6) An indication that the assignment applies to the designation to the
United States;
(7) A statement that the assignment applies to all the goods and/or services
in the international registration, or if less, a list of the goods and/or
services in the international registration that have been assigned that
pertain to the designation to the United States; and
(8) The U.S. transmittal fee required by § 7.6 and the international
fee required to record the assignment (see § 7.7).
(b) If a request to record an assignment contains all the elements set
forth in paragraph (a) of this section, the Office will forward the request
to the International Bureau. Forwarding the request to the International
Bureau is not a determination by the Office of the validity of the assignment
or the effect that the assignment has on the title of the international
registration.
(c) If the request fails to contain all the elements set forth in paragraph
(a) of this section, the Office will not forward the request to the International
Bureau. The Office will notify the assignee(s) of the reason(s). If the
assignee paid the fees to record the assignment (see § 7.7) through
the Office, the Office will refund the recording fee. The Office will
not refund the transmittal fee.
(d) Correspondence to correct any irregularities in a request to record
an assignment must be made directly with the International Bureau.
§ 7.24 Requests to record security interest or other restriction
of holder's rights of disposal or release of such restriction submitted
through the Office.
(a) A party who obtained a security interest or other restriction of a
holder's
right to dispose of an international registration, or the release of such
a restriction, may submit a request to record the restriction or release
through the Office for forwarding to the International Bureau only if:
(1) The restriction or release:
(i) Is the result of a court order; or
(ii) Is the result of an agreement
between the holder of the international registration and the party restricting
the holder's right of disposal, and the signature of the holder cannot
be obtained for the request to record the restriction or release;
(2) The party who obtained the restriction is a national of, is domiciled
in, or has a real and effective industrial or commercial establishment
in the United States; and
(3) The restriction or release applies to the holder's right to dispose
of the international registration in the United States.
(b) A request to record a restriction or the release of a restriction
must be submitted by the party who obtained the restriction of the holder's
right of disposal and include all the following:
(1) The international registration number;
(2) The name and address of the holder of the international registration;
(3) The name and address of the party who obtained the restriction;
(4) A statement that the party who submitted the request: Is a national
of the United States; has a domicile in the United States; or has a real
and effective industrial or commercial establishment in the United States.
Where a party's address is not in the United States, the party must provide
the address of its U.S. domicile or establishment;
(5) (i) A statement that the restriction is the result of a court order,
or
(ii) Where the restriction is the result of an agreement between the holder
of the international registration and the party restricting the holder's
right of disposal, a statement that the signature of the holder of the
international registration could not be obtained for the request to record
the restriction or release of the restriction;
(6) A summary of the main facts concerning the restriction;
(7) An indication that the restriction, or the release of the restriction,
of the holder's right of disposal of the international registration applies
to the designation to the United States; and
(8) The U.S. transmittal fee required by § 7.6.
(c) If a request to record a restriction, or the release of a restriction,
contains all the elements set forth in paragraph (b) of this section,
the Office will forward the request to the International Bureau. Forwarding
the request to the International Bureau is not a determination by the
Office of the validity of the restriction, or its release, or the effect
that the restriction has on the holder's right to dispose of the international
registration.
(d) If the request fails to contain all the elements set forth in paragraph
(b) of this section, the Office will not forward the request. The Office
will notify the party who submitted the request of the reason(s). The
Office will not refund the transmittal fee.
(e) Correspondence to correct any irregularities in a request to record
a restriction of a holder's right to dispose of an international registration
or the release of such a restriction must be made directly with the International
Bureau.
Subpart E-Extension of Protection to the United
States
§ 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for §§ 2.130-2.131,2.1602.166,2.168,2.172,2.173,2.175,
and 2.181-2.186, all sections in part 2 and all sections of part 10 of
this chapter apply to a request for extension of protection of an international
registration to the United States, including sections related to proceedings
before the Trademark Trial and Appeal Board, unless stated otherwise.
(b) The Office will refer to a request for an extension of protection
to the United States as an application under section 66(a) of the Act,
and references to applications and registrations in part 2 of this chapter
include extensions of protection to the United States.
(c) Upon registration in the United States under section 69 of the Act,
an extension of protection to the United States is referred to as a registration,
a registered extension of protection, or a section 66(a) registration.
§ 7.26 Filing date of extension of protection for purposes
of examination in the Office.
(a) If a request for extension of protection of an international registration
to the United States is made in an international application and the request
includes a declaration of a bona fide intention to use the mark in commerce
as set out in § 2.33(e) of this chapter, the filing date of the extension
of protection to the United States is the international registration date.
(b) If a request for extension of protection of an international registration
to the United States is made in a subsequent designation and the request
includes a declaration of a bona fide intention to use the mark in commerce
as set out in § 2.33(e), the filing date of the extension of protection
to the United States is the date that the International Bureau records
the subsequent designation.
§ 7.27 Priority claim of extension of protection for purposes
of examination in the Office.
An extension of protection of an international registration to the United
States is entitled to a claim of priority under section 67 of the Act
if:
(a) The request for extension of protection contains a claim of priority;
(b) The request for extension of protection specifies the filing date,
serial number and the country of the application that forms the basis
for the claim of priority; and
(c) The date of the international registration or the date of recording
of the subsequent designation at the International Bureau of the request
for extension of protection to the United States is not later than six
months after the filing date of the application that forms the basis for
the claim of priority.
§ 7.28 Replacement of U.S. registration by registered extension
of protection.
(a) A registered extension of protection affords the same rights as those
afforded to a previously issued U.S. registration if:
(1) Both registrations are owned by the same person and identify the same
mark; and
(2) All the goods and/or services listed in the U.S. registration are
also listed in the registered extension of protection.
(b) The holder of an international registration with a registered extension
of protection to the United States that meets the requirements of paragraph
(a) of this section may file a request to note replacement of the u.s.
registration with the extension of protection. If the request contains
all of the following, the Office will take note of the replacement in
its automated records:
(1) The serial number or registration number of the extension of protection;
(2) The registration number of the replaced U.S. registration; and
(3) The fee required by § 7.6.
(c) If the request to note replacement is denied, the Office will notify
the holder of the reason(s) for refusal.
§ 7.29 Effect of replacement on U.S. registration.
A U.S. registration that has been replaced by a registered extension of
protection under section 74 of the Act and § 7.28 will remain in
force, unless cancelled, expired or surrendered, as long as:
(a) The owner of the replaced U.S. registration continues to file affidavits
or declarations of use in commerce or excusable nonuse under section 8
of the Act; and
(b) The replaced U.S. registration is renewed under section 9 ofthe Act.
§ 7.30 Effect of cancellation or expiration of international registration.
When the International Bureau notifies the Office of the cancellation
or expiration of an international registration, in whole or in part, the
Office shall cancel, in whole or in part, the corresponding pending or
registered extension of protection to the United States. The date of cancellation
of an extension of protection or relevant part shall be the date of cancellation
or expiration of the corresponding international registration or relevant
part.
§ 7.31 Requirements for transformation of an extension of
protection to the United States into a U.S. application.
If the International Bureau cancels an international registration in whole
or in part, under Article 6(4) ofthe Madrid Protocol, the holder of that
international registration may file a request to transform the corresponding
pending or registered extension of protection to the United States into
an application under section 1 or 44 of the Act.
(a) The holder of the international registration must file a request for
transformation through TEAS within three months of the date of cancellation
of the international registration and include:
(1) The serial number or registration number of the extension of protection
to
the United States;
(2) The name and address of the holder of the international registration;
(3) The application filing fee for at least one class of goods or services
required by § 2.6(a)(1) of this chapter; and
(4) An e-mail address for receipt of correspondence from the Office.
(b) If the request for transformation contains all the elements set forth
in paragraph (a) of this section, the extension of protection shall be
transformed into an application under section 1 and/or 44 of the Act and
accorded the same filing date and the same priority that was accorded
to the extension of protection.
(c) The application under section 1 and/or 44 of the Act that results
from a transformed extension of protection will be examined under part
2 of this chapter.
(d) A request for transformation that fails to contain all the elements
set forth
in paragraph (a) of this section will not be accepted.
Subpart F-Affidavit Under Section 71 of the Act
for Extension of Protection to the United States
§ 7.36 Affidavit or declaration of use in commerce or excusable
nonuse required to avoid cancellation of an extension of protection to
the United States.
(a) Subject to the provisions of section 71 of the Act, a registered extension
of protection shall remain in force for the term of the international
registration
upon which it is based unless the international registration expires or
is cancelled under section 70 of the Act due to cancellation of the international
registration by the International Bureau.
(b) During the following time periods, the holder of an international
registration must file an affidavit or declaration of use or excusable
nonuse, or the registered extension of protection will be cancelled under
section 71 of the Act:
(1) On or after the fifth anniversary and no later than the sixth anniversary
after the date of registration in the United States; and
(2) Within the six-month period preceding the end of each ten-year period
after the date of registration in the United States, or the three-month
grace period immediately following, with payment of the grace period surcharge
required by section 71(a)(2)(B) of the Act and § 7.6.
§ 7.37 Requirements for a complete affidavit or declaration
of use in commerce or excusable nonuse.
A complete affidavit or declaration under section 71 of the Act must:
(a) Be filed by the holder of the international registration within the
period set forth in § 7.36(b);
(b) Include a statement that is signed and verified (sworn to) or supported
by a declaration under § 2.20 of this chapter by a person properly
authorized to sign on behalf of the holder, attesting to the use in commerce
or excusable nonuse of the mark within the period set forth in section
71 of the Act. The verified statement must be executed on or after the
beginning of the filing period specified in § 7.36(b). A person who
is properly authorized to sign on behalf of the holder is:
(1) A person with legal authority to bind the holder; or
(2) A person with firsthand knowledge of the facts and actual or implied
authority to act on behalf of the holder; or
(3) An attorney as defined in § 10.1(c) of this chapter who has an
actual written or verbal power of attorney or an implied power of attorney
from the holder.
(c) Include the U.S. registration number;
(d)(1) Include the fee required by § 7.6 for each class of goods
or services that the affidavit or declaration covers;
(2) If the affidavit or declaration is filed during the grace period under
section 71(a)(2)(B) of the Act, include the grace period surcharge per
class required by § 7.6;
(3) If at least one fee is submitted for a multi-class registration, but
the class(es) to which the feels) should be applied are not specified,
the Office will issue a notice requiring either the submission of additional
feels) or an indication of the class(es) to which the original feels)
should be applied. If the required feels) are not submitted within the
time period set out in the Office action and the class(es) to which the
original feels) should be applied are not specified, the Office will presume
that the feels) cover the classes in ascending order, beginning with the
lowest numbered class;
(e)(1) Specify the goods or services for which the mark is in use in commerce,
and/or the goods or services for which excusable nonuse is claimed under
§ 7.37(f)(2);
(2) Specify the goods or services being deleted from the registration,
if the affidavit or declaration covers less than all the goods or services
or less than all the classes in the registration;
(f)(1) State that the registered mark is in use in commerce on or in connection
with the goods or services in the registration; or
(2) If the registered mark is not in use in commerce on or in connection
with all the goods or services in the registration, set forth the date
when use of the mark in commerce stopped and the approximate date when
use is expected to resume and recite facts to show that nonuse as to those
goods or services is due to special circumstances that excuse the nonuse
and is not due to an intention to abandon the mark; and
(g) Include a specimen showing current use of the mark for each class
of goods or services, unless excusable nonuse is claimed under §
7.37(f)(2). The specimen must meet the requirements of§2.56 of this
chapter.
§ 7.38 Notice to holder of extension of protection.
The registration certificate for an extension of protection to the United
States includes a notice of the requirement for filing the affidavit or
declaration of use or excusable nonuse under section 71 of the Act. However,
the affidavit or declaration must be filed within the time period required
by section 71 of the Act regardless of whether this notice is received.
§ 7.39 Acknowledgment of receipt of affidavit or declaration
of use in commerce or excusable nonuse.
(a) The Office will issue a notice that states an affidavit or declaration
of use
in commerce or excusable nonuse is acceptable or if the affidavit or declaration
is refused, an Office action that states the reason(s) for refusal.
(b) A Response to a refusal under paragraph (a) of this section must be
filed within six months of the mailing date of the Office action, or before
the end of the filing period set forth in section 71(a) of the Act, whichever
is later. The Office will cancel the extension of protection if no response
is filed within this time period.
§ 7.40 Petition to Director to review refusal.
(a) A response to the examiner's initial refusal to accept an affidavit
or declaration is required before filing a petition to the Director, unless
the examiner directs otherwise. See § 7.39(b) for the deadline
for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or declaration,
the holder may file a petition to the Director to review the examiner's
action. The petition must be filed within six months of the mailing date
of the action maintaining the refusal, or the Office will cancel the registration.
(c) A decision by the Director is necessary before filing an appeal or
commencing a civil action in any court.
Subpart G-Renewal of International Registration
and Extension of Protection
§ 7.41 Renewal of international registration and extension
of protection.
(a) Any request to renew an international registration and its extension
of protection to the United States must be made at the International Bureau
in accordance with Article 7 of the Madrid Protocol.
(b) A request to renew an international registration or extension of protection
to the United States submitted through the Office will not be processed.
Dated: September 10, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director
of the United States Patent and Trademark Office.
Note: The following appendix will not appear in the Code
of Federal Regulations.
BILLING CODE 3510-16-P
(C)
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