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e-CFR data is current as of October 22, 2020

Title 37Chapter IPart 7 → Subpart A


Title 37: Patents, Trademarks, and Copyrights
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 Information


Contents
§7.1   Definitions of terms as used in this part.
§7.2   [Reserved]
§7.3   Correspondence must be in English.
§7.4   International applications and registrations originating from the USPTO—Requirements to electronically file and communicate with the Office.
§7.5   [Reserved]
§7.6   Schedule of U.S. process fees.
§7.7   Payments of fees to International Bureau.

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§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, and, as used in this part, includes all related electronic systems required to complete an electronic submission through TEAS.

(d) The term Office or the abbreviation USPTO 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.

(f) The definitions specified in §2.2 of this chapter apply to this part.

[68 FR 55769, Sept. 26, 2003, as amended at 80 FR 33190, June 11, 2015; 84 FR 31511, July 2, 2019; 84 FR 37098, July 31, 2019]

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§7.2   [Reserved]

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§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.

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§7.4   International applications and registrations originating from the USPTO—Requirements to electronically file and communicate with the Office.

(a) Unless stated otherwise in this chapter, all correspondence filed with the USPTO relating to international applications and registrations originating from the USPTO must be submitted through TEAS and include a valid email address for correspondence.

(b) Applicants and registrants under this section must provide and maintain a valid email address for correspondence with the Office.

(c) If an applicant or registrant under this section is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraphs (a) and (b) of this section do not apply.

(d) If TEAS is unavailable, or in an extraordinary situation, an applicant or registrant under this section who is required to file a submission through TEAS may submit a petition to the Director under §2.146(a)(5) and (c) of this chapter to accept the submission filed on paper.

[84 FR 37098, July 31, 2019]

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§7.5   [Reserved]

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§7.6   Schedule of U.S. process fees.

(a) The Office requires the following process fees:

(1) Certification of international application based on single application or registration. (i) For certifying an international application based on a single basic application or registration, filed on paper, per class—$200.00

(ii) For certifying an international application based on a single basic application or registration, filed through TEAS, per class—$100.00

(2) Certification of international application based on more than one application or registration. (i) For certifying an international application based on more than one basic application or registration filed on paper, per class—$250.00

(ii) For certifying an international application based on more than one basic application or registration filed through TEAS, per class—$150.00

(3) Transmission of subsequent designation. (i) For transmitting a subsequent designation under §7.21, filed on paper—$200.00

(ii) For transmitting a subsequent designation under §7.21, filed through TEAS—$100.00

(4) Transmission of request to record an assignment or restriction. (i) For transmitting a request to record an assignment or restriction, or release of a restriction, under §7.23 or §7.24 filed on paper—$200.00

(ii) For transmitting a request to record an assignment or restriction, or release of a restriction, under §7.23 or §7.24 filed through TEAS—$100.00

(5) Notice of replacement. (i) For filing a notice of replacement under §7.28 on paper, per class—$200.00

(ii) For filing a notice of replacement under §7.28 through TEAS, per class—$100.00

(6) Affidavit under section 71. (i) For filing an affidavit under section 71 of the Act on paper, per class—$225.00

(ii) For filing an affidavit under section 71 of the Act through TEAS, per class—$125.00

(7) Filing affidavit under section 71 during grace period. (i) Surcharge for filing an affidavit under section 71 of the Act during the grace period on paper, per class—$200.00

(ii) Surcharge for filing an affidavit under section 71 of the Act during the grace period through TEAS, per class—$100.00

(8) Correcting deficiency in section 71 affidavit. (i) For correcting a deficiency in a section 71 affidavit filed on paper—$200.00

(ii) For correcting a deficiency in a section 71 affidavit filed through TEAS—$100.00

(b) The fees required in paragraph (a) of this section must be paid in U.S. dollars at the time of submission of the 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.

[81 FR 72708, Oct. 21, 2016]

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§7.7   Payments of fees to International Bureau.

(a) For documents filed through TEAS, 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) All fees for paper filings must be paid directly to the International Bureau.

(d) 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/.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57185, Sept. 24, 2004]

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