When Extension of Protection (EP) is granted by foreign country

When an extension of protection (EP) is granted, the EP is vulnerable to “central attack” for 5 years after registration. This means that if the U.S. basic registration is canceled within 5 years of registration, the EP or EPs abroad will also fall. In this scenario, the owner of the EP may “transform” the EP into a national registration in the country in which the EP has been granted. This transformation must occur within 3 months of the official cancellation of the basic registration.

Requirements for international applications at the USPTO for U.S. applicants

The applicant should file through the Trademark Electronic Application System (TEAS) [this requirement has temporarily been suspended, and a paper submission is required]. The applicant must do the following:

•   file a basic application and provide the filing date and/or provide number of registration and registration date;

•   provide the name and address of applicant;

•   provide an acceptable drawing (color drawings now acceptable; a color drawing must be attached if a claim of color is being asserted)

•   provide a claim of color as a feature of the mark, if applicable;

•   provide a description of the mark, if applicable;

•   provide the type of mark, if applicable;

•   provide a claim that the mark is in “standard characters,” if applicable (the term “standard character” replaces the term “typed drawing”);

•   provide an identification of goods or recitation of services, the scope of which is equal to or less than that of the basic application;

•   designate the member country or countries to which a request for extension of protection (REP) will be sent (subsequent designations can be made for a fee);

•   indicate entitlement to file (applicant must be domiciled in the U.S., be a national of the U.S., or must have a real and effective industrial or commercial establishment in the U.S.);

•   assert priority under the Paris Convention, if possible;

•   provide e-mail address of applicant;

•   provide filing fees (there is a “fee calculator” on the USPTO Web site).