The IB will record changes and other matters concerning international registrations in the International Register. Such requests are governed by Articles 9 and 9bis and Common Reg. 25. Some of the changes that can be recorded in the International Register are:

1. Change in ownership of the registration;
2. Change of holder’s name and address;
3. Change in name or address of holder’s representative;
4. Limitation, renunciation, or cancellation of international registration.

Most requests to record changes must be filed with the IB on the IB’s forms, available on the IB website at http://www.wipo.int/madrid/en/. There are only two limited situations in which a request to record a change may be filed with the IB through the USPTO:

1. (1) an assignment that meets the requirements of 37 C.F.R. §7.23(a) (see TMEP §1906.01(a)(i)); or
2. (2) a security interest or other restriction of a holder’s right to dispose of an international registration (or the release of such a restriction) that meets the requirements of 37 C.F.R. §§7.24(a) and (b) (see TMEP §1906.01(b)).

37 C.F.R. §7.22.

The IB will record a change in ownership by assignment, merger, court decision, or operation of law at the request of the holder, the Contracting Party of the holder, or an interested person. Article 9; Common Reg. 25(1)(a)(i). The change may relate to some or all of the goods/services in some or all of the designated Contracting Parties. A fee is required.

Most requests to record changes of ownership must be filed directly with the IB. 37 C.F.R. §§7.22 and 7.23. Form MM5 is available on the IB website at http://www.wipo.int/madrid/en/ for that purpose. The IB does not require copies of assignments or other supporting documents. See TMEP §1906.01(a)(i) regarding the limited circumstances in which a request to record a change in ownership may be filed with the IB through the USPTO.

The USPTO will accept for submission and forward to the IB a request to record a change of ownership only if all of the following conditions have been met:

1. (1) the assignee cannot obtain the assignor’s signature on the request to record the change;
2. (2) the assignee is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States; and
3. (3) the assigned goods/services applies to the designation to the United States.

37 C.F.R. §7.23.

No other requests to record changes of ownership can be filed through the USPTO. 37 C.F.R. §§7.22 and 7.23.

A request to record a change of ownership filed through the USPTO must also include:

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: (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 assignee’s address is not in the United States, the assignee must provide the address of its United States 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/services in the international registration, or if less, a list of the goods/services in the international registration that have been assigned that pertain to the designation to the United States; and
8. The USPTO transmittal fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.23(a).

The USPTO currently does not have a TEAS form available for requests to record a change of ownership of an international registration. A holder must use the official IB form MM5 available on the IB website at: http://www.wipo.int/madrid/en. The IB will not accept paper requests that are not presented on the official IB form. The form cannot be handwritten. Comm Reg. 25(1)(a); Madrid Admin. Instr. §6(a). The holder should complete the form online, print the completed form and submit it to the USPTO by mail, hand delivery, or courier service.

The completed form submitted through the USPTO must be mailed using the First Class Service of the USPS to:

Madrid Processing Unit

600 Dulany Street

MDE-7B87

Alexandria

Virginia

22314-5793

37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, requests to record changes of ownership may be delivered by hand or courier to the Trademark Assistance Center at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).

Requests to record changes of ownership cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(4).

If a request to record a change of ownership is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the request to record was submitted on the day it was deposited as Express Mail, provided that the holder complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding Express Mail.

The holder should include a self-addressed, stamped postcard with the paper-filed request to record a change of ownership. Upon receipt, the USPTO will place a label indicating the receipt date on the postcard and return it to the holder.

If the request meets the requirements of 37 C.F.R. §7.23(a), the USPTO will forward it to the IB. 37 C.F.R. §7.23(b). If the request does not meet these requirements, the USPTO will not forward the request to the IB, and will notify the holder of the reasons. The USPTO will not refund the transmittal fee. 37 C.F.R. §7.23(c).

If the IB determines that a request to record a change sent through the USPTO is irregular, the IB will notify both the USPTO and the holder. Common Reg. 26(1). The holder must file a response to any notice of irregularity with the IB; the response cannot be filed through the USPTO. 37 C.F.R. §7.23(d).

Occasionally, extraordinary circumstances render the assignee of an international registration for which the USPTO was the Office of Origin unable to secure the signature of the holder of that registration. In that instance, the assignee may petition the Director to waive the requirements of 37 C.F.R. §§7.23(a)(6) and (7), pursuant to 37 C.F.R. §2.146. See TMEP Chapter 1700 regarding petitions to the Director.

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration. 37 C.F.R. §7.22.

The international fee for a request to record a change of ownership must be paid directly to the IB in Swiss currency, and may be paid either before or after submission of the request to record. 37 C.F.R. §7.7(c). However, fees paid after the document is received by the IB could result in a notice of irregularity. See TMEP §1903.02 regarding payment of international fees to the IB.

The validity of a change in ownership with respect to a particular Contracting Party is governed by the law of that Contracting Party. The office of a designated Contracting Party may declare that a change in ownership has no effect in its territory. The declaration must be sent to the IB within 18 months of the date of IB’s notification of the change. Common Reg. 27(4).

When ownership of an international registration changes with respect to some but not all of the goods/services for all designated Contracting Parties, the IB will create a separate new international registration for the goods/services that have been transferred, and notify the USPTO accordingly. See the IB’s Guide to International Registration, Para. B.II.65.01.

When the IB notifies the USPTO of the division of an international registration resulting from a change of ownership with respect to some but not all of the goods or services, the USPTO will construe the IB’s notice as a request to divide. See 37 C.F.R. §§2.87(g) and 2.171(b)(2).

See TMEP §1110.11 regarding division of a pending §66(a) application after a partial change of ownership, TMEP §1615.02 regarding division of a registered extension of protection after a partial change of ownership, and TMEP §501.07 regarding assignment of extensions of protection.

Under Common Reg. 20(1)(a), a holder of an international registration or a Contracting Party of the holder (i.e., a Contracting Party in which the holder is a national, is domiciled, or has a real and effective business or commercial establishment) may inform the IB that the holder’s right to dispose of the international registration has been restricted in whole or in part. Also, under Common Reg. 20(1)(b), the office of any designated Contracting Party may inform the IB that the holder’s right of disposal has been restricted in the territory of that Contracting Party. Examples of restrictions on the holder’s right to dispose are security interests and court orders concerning the disposal of the assets of the holder.

The USPTO will accept for submission and forward to the IB a request to record a restriction of a holder’s right to dispose of an international registration, or the release of such a restriction, only if all of the following conditions have been met:

1. (1) (i) the restriction is the result of a court order; or (ii) 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, and the signature of the holder of the international registration cannot be obtained;
2. (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;
3. (3) the restriction or release applies to the holder’s right to dispose of the international registration in the United States; and
4. (4) the restriction or release applies to the designation to the United States.

37 C.F.R. §7.24(a).

All other requests to record restrictions must be filed with the IB. 37 C.F.R. §§7.22 and 7.24(a).

A request to record a restriction filed through the USPTO must include:

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: (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 a party’s address is not in the United States, the party must provide the address of its United States domicile or establishment;
5. A statement that (i) 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 to dispose of the international registration applies to the designation to the United States; and
8. The United States transmittal fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.24(b).

A request to record a restriction or release submitted through the USPTO must be mailed using the First Class Service of the USPS to:

Madrid Processing Unit

600 Dulany Street

MDE-7B87

Alexandria

Virginia

22314-5793

37 C.F.R. §§2.190(e) and 7.4(b). Alternatively, requests to record restrictions or releases may be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c).

Requests to record restrictions or releases cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(5).

If a request to record a restriction or release is mailed to the USPTO via the Express Mail Service of the USPS, the USPTO will deem that the request was submitted on the day it was deposited as Express Mail, provided that the holder complies with the requirements for correspondence sent by Express Mail set forth in 37 C.F.R. §2.198. See TMEP §305.03 regarding Express Mail.

If the request meets the requirements of 37 C.F.R. §7.24(b), the USPTO will forward it to the IB. 37 C.F.R. §7.24(c). If the request does not meet these requirements, the USPTO will refuse to forward the request to the IB, and will notify the holder of the reasons. The USPTO will not refund the transmittal fee. 37 C.F.R. §7.24(d).

If the IB determines that a request to record a restriction sent through the USPTO is irregular, the IB will notify both the USPTO and the holder. Common Reg. 26(1). The holder must file a response to any notice of irregularity with the IB; the response cannot be filed through the USPTO. 37 C.F.R. §7.24(e).

Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to restrictions of a holder’s right to dispose of an international registration. 37 C.F.R. §7.22.

A request to record a change of the holder’s name or address must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22. Form MM9 is available for this purpose on the IB website at http://www.wipo.int/madrid/en/. Article 9bis; Common Reg. 25(2).

A request to record a change of the representative’s name or address must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22. Form MM10 is available for such requests on the IB website at http://www.wipo.int/madrid/en/. See also Common Reg. 36(i).

See TMEP §§609.01(a) and 1904.02(i) regarding the correspondence address in a request for extension of protection to the United States.

Requests to record a limitation, renunciation or cancellation of an international registration must be filed with the IB; they cannot be filed through the USPTO. 37 C.F.R. §7.22. There are forms for such requests on the IB website at http://www.wipo.int/madrid/en/forms. Under Article 9bis, a holder may record the following restrictions:

1. Limitation of the list of goods/services with respect to some or all of the designated Contracting Parties (Common Reg. 25(1)(a)(ii));
2. Cancellation of the international registration with respect to all the designated Contracting Parties for some or all of the goods/services (Common Reg. 25(1)(a)(v));
3. Renunciation with respect to some but not all of the designated Contracting Parties for all the goods/services (Common Reg. 25(1)(a)(iii)).

The office of a designated Contracting Party may declare that a limitation has no effect in its territory, e.g., because it determines that the change requested results in an extension rather than a limitation. Such declaration must be sent to the IB within 18 months of the date of the IB’s notification of the limitation. Common Reg. 27(5).

See TMEP §1904.03(g) regarding limitations in pending §66(a) applications, and TMEP §1904.15 regarding limitations in registered extensions of protection to the United States. See also TMEP §1904.02(e)(ii).

The IB will correct errors in an international registration at the request of the holder or the Office of Origin. Common Reg. 28(1). Requests to correct errors in international registrations in which the USPTO was the Office of Origin must be filed directly with the IB, unless the error was made by the USPTO.

The office of a designated Contracting Party may declare in a notification of provisional refusal that protection can no longer be granted to an international registration as corrected. A new refusal period under Article 5 of the Protocol and Common Regs. 16-17 starts to run from the date of the correction, but only in respect to grounds that did not exist prior to the correction. Common Reg. 28(3).

See TMEP §1904.03(f) regarding corrections to §66(a) applications, and TMEP §1904.14 regarding corrections to registered extensions of protection.

Where the same party is the holder of two or more international registrations of the same mark due to a partial change in ownership, that party may request the IB to record a merger of the registrations. Common Reg. 27(3). The request must be filed with the IB; it cannot be filed through the USPTO. 37 C.F.R. §7.22.

Under Common Reg. 20bis(1), a holder may file a request to record a license, a request for amendment of the recording of a license, or a request for cancellation of the recording of a license. Requests to record a license, or to cancel or amend the recording of a license, cannot be filed through the USPTO. 37 C.F.R. §7.22. There are forms for these requests on the IB website at http://www.wipo.int/madrid/en/. A designated Contracting Party may declare that the recording of a license has no effect in its territory. The declaration must be sent within 18 months of the IB’s notification of recording of the license. Common Reg. 20bis(5).

Mark in International Registration Cannot Be Changed. There is no provision for a mark to be amended in any way, at any time, even if the mark in the basic application or basic registration changes. Guide to International Registration, Para. B.II.69.02.

Goods/Services in International Registration Cannot be Expanded. It is not possible to expand the list of goods/services, even if the added goods/services were listed in the basic application or registration. Guide to International Registration, Para. B.II.69.03.