If the information contained in an international application corresponds to the information in the basic application or basic registration, the USPTO will certify the international application and forward it to the IB. 15 U.S.C. §1141b.

If an applicant uses the prepopulated form in the trademark electronic filing system without changing any of the information ( see TMEP §1902.02(a)), the international application will be certified and forwarded to the IB without review by the MPU. In all other cases, an MPU trademark specialist must review the data in the international application to determine whether such data corresponds to the basic application or basic registration.

Under Article 3(1) and Regulations Rule 9(5)(d), the USPTO must sign the international application and certify:

1. The date on which the USPTO received the international application (Regs. Rule 9(5)(d)(i));
2. That the mark in the international application is the same as the mark in the basic application or registration (Regs. Rule 9(5)(d)(iv));
3. That the applicant is the same person or entity listed as the owner of the basic application or registration (Regs. Rule 9(5)(d)(ii));
4. That the goods/services identified in the international application are covered by the basic application or registration (Regs. Rule 9(5)(d)(vi));
5. That the applicant is qualified to file an international application under §61 of the Trademark Act and Article 2(1);
6. That, if the international application includes a description of the mark, the description is consistent with the basic application or registration (Regs. Rules 9(4)(a)(xi), 9(4)(b)(vi), 9(5)(d)(iii));
7. That, if the international application indicates that the mark consists of a color or combination of colors, this indication is consistent with the basic application or registration (Regs. Rules 9(4)(a)(vii^bis), 9(5)(d)(iii));
8. That, if color is claimed as a feature of the mark in the basic application or registration, the same claim is included in the international application (Regs. Rule 9(5)(d)(v));
9. That, if the international application indicates that the mark is three-dimensional, this indication is consistent with the basic application or registration (Regs. Rules 9(4)(a)(viii), 9(5)(d)(iii));
10. That, if the international application indicates that the mark is a sound mark, this indication is consistent with the basic application or registration (Regs. Rules 9(4)(a)(ix), 9(5)(d)(iii));
11. That, if the international application indicates that the mark is a collective or certification mark, this indication is consistent with the basic application or registration (Regs. Rules 9(4)(a)(x), 9(5)(d)(iii)).

If the international application meets the requirements of 37 C.F.R. §7.11(a), the USPTO will certify the application and send it to the IB. 37 C.F.R. §7.13(a). The MPU will send a notice of certification to the applicant.

If the application does not meet the requirements of 37 C.F.R. §7.11(a), the USPTO will not certify the application or forward it to the IB. The USPTO will notify the applicant of the reason(s) why the application cannot be certified. The USPTO will refund any international fees paid through the trademark electronic filing system. The USPTO certification fee will not be refunded. 37 C.F.R. §7.13(b).

An applicant should periodically check the status of the international application online, using TSDR. If the applicant does not receive a notice of certification or refusal within two months of filing, the applicant should contact the MPU. However, once an international application is certified and forwarded to the IB, questions concerning the international application should be directed to the IB rather than the USPTO. See TMEP §1906 for information on contacting the IB. The USPTO will update TSDR when the IB issues a certificate of international registration or a notice of irregularity concerning the international application. See TMEP §1902.06 regarding the IB’s examination of international registrations.

If an applicant believes that a refusal to certify an international application was erroneous, the applicant may file a Petition to Director to Review Denial of Certification of International Application form under 37 C.F.R. §2.146(a)(3) in the trademark electronic filing system. The petition must include the USPTO reference number, an explanation as to why the international application should be certified, any necessary corrective amendments or documents, and the petition fee required by 37 C.F.R. §2.6.

The petition should be filed immediately. If the international application is not certified within two months of the date of receipt of the application in the USPTO, the date of international registration will be affected. Article 3(4); Regs. Rule 15. See TMEP §1902.04.

If the denial of certification is due to an error in the international application that must be corrected, the petition must include a substitute paper international application (MM2). The MM2 form can be accessed on the WIPO website. If the denial was due to an error in the basic application or basic registration that requires correction, the applicant should immediately file the amendment in the basic application, or a Section 7 amendment in the registration, as well as filing the petition. As noted above, the USPTO must certify the international application within two months of the date of receipt of the international application in the USPTO or the date of international registration will be affected. Article 3(4); Regs. Rule 15. See TMEP §1902.04.

If the denial of certification was due to USPTO error, the USPTO will grant the petition and refund the petition fee. In all other cases, whether the petition is granted or denied, the petition fee is not refundable, unless the petition is withdrawn before a decision issues.

See TMEP §1702, §1703, and §1705 regarding petitions to the Director under 37 C.F.R. §2.146(a)(3).

If an applicant or registrant discovers an error in the international application as filed, or the international registration as issued, the applicant or registrant may file a Petition to Director for an International Application/Registration form under 37 C.F.R. §2.146(a)(3) in the trademark electronic filing system.

The petition should be filed as soon as possible, but not more than two months after the issue date of the action, or date of the receipt of the filing, from which relief is requested. 37 C.F.R. §2.146(d)(1). The petition should refer to the USPTO reference number, set forth the error that was made and the remedy requested, and include the petition fee required by 37 C.F.R. §2.6.

If the petition is denied, the petition fee will not be refunded. If the petition requests withdrawal of an international application, regardless of whether the application has been certified, the certification fees are not refundable. See TMEP §1702, §1703, and §1705 regarding petitions to the Director under 37 C.F.R. §2.146(a)(3).