Form of International Application

An international application must be filed either (1)

using the trademark electronic filing system (

see

TMEP §301.01(a)

) or (2) on the official

paper form issued by the IB if permitted under

37 C.F.R. §7.4(c)

(

see

TMEP §301.02(c)

) or accepted on petition

pursuant to

37 C.F.R. §7.4(d)

(

see

TMEP §301.02(e)

).

37 C.F.R.

§7.11(a)

.

Electronic Form

The trademark electronic filing system will require the

applicant to select between two different forms, a prepopulated form or a free-text

form.  The applicant should use the prepopulated form if:  (1) the international

application is based on a single basic application or registration; and

(2) applicant’s changes to the international application are limited to:

Narrowing the list of goods or services;

Changing the classification;

Changing the applicant’s address; and/or

Attaching a color reproduction of the mark where

the mark in the basic application or registration is in black and white with a

color claim (

see

TMEP

§1902.02(d)

,

(e)

).

The prepopulated form will automatically display the

exact information that is in the Trademark database for one specific U.S. application

serial number or registration number.  However, if the international application is

based on a newly filed U.S. application that has not yet been uploaded into the

USPTO’s automated records, the form will instruct the applicant to either wait for

the USPTO to upload the data or use the free-text form. It normally takes 48 to 72

hours for the USPTO to upload a newly filed U.S. application. To determine whether

the basic application data has been entered, the applicant may check the Trademark

Status and Document Retrieval (TSDR) database on the USPTO website at

https://tsdr.uspto.gov/

.

The applicant should use the free-text form if the

applicant wishes to change other data in the international application, or if the

international application is based on more than one basic application and/or

registration

he basic application data has been entered, the applicant may check the Trademark

Status and Document Retrieval (TSDR) database on the USPTO website at

https://tsdr.uspto.gov/

.

The applicant should use the free-text form if the

applicant wishes to change other data in the international application, or if the

international application is based on more than one basic application and/or

registration.

Permitted Paper Form

When permitted to be filed on paper

(

see

TMEP §301.02(c)

) or accepted on petition

(

see

TMEP §301.02(e)

), applicants must submit

the official international application form issued by the IB, the MM2 form, to the

USPTO.  This form is available on the IB website at

https://www.wipo.int/madrid/en/forms/

. The IB’s Guide to

International Registration has instructions for completing the international

application form.

The IB will not accept paper applications that are not

submitted on the official IB form.  Article 3(1); Regs. Rules 9(2)(a), 11(4)(a)(i);

Madrid Admin. Instrs. §2.  The form may not be handwritten.  Admin. Instrs. §6(a).

The applicant should complete the MM2 form online, print the completed form, and

submit it to the USPTO by mail, hand delivery, or courier service.

The applicant should include a self-addressed, stamped

postcard with the international application. Upon receipt of the international

application, the USPTO will place a control number and a label indicating the receipt

date on the documents and return the postcard to the applicant. The applicant should

reference the control number whenever contacting the USPTO about the application.

The applicant may mail the completed paper application

form using the first-class mail service of the U.S. Postal Service (USPS) to the

address in

TMEP §305.01

. See

§§305.02-305.02(h)

regarding certificate of mailing

procedures and

§§305.03-305.03(e)

regarding Priority Mail

Express® procedures.

Alternatively, the applicant may deliver the

application by hand or courier. See

TMEP §307

regarding

hand delivery of documents to the USPTO

paper application

form using the first-class mail service of the U.S. Postal Service (USPS) to the

address in

TMEP §305.01

. See

§§305.02-305.02(h)

regarding certificate of mailing

procedures and

§§305.03-305.03(e)

regarding Priority Mail

Express® procedures.

Alternatively, the applicant may deliver the

application by hand or courier. See

TMEP §307

regarding

hand delivery of documents to the USPTO.

International applications may not be filed by email

or fax and, if submitted by such means, will not be accorded a date of receipt. See

37 C.F.R.

§2.195(c)

.