New Procedure for U.S. Applicant

(1) The applicant submits an “international application” to the USPTO, based on either a U.S. application or registration, in which at least one member country is designated.

(2) The USPTO must “certify” the international application as conforming to minimum requirements, which are addressed in more detail below.

(3) The USPTO must forward the international application to the World Intellectual Property Organization (WIPO), the international body that administers the Protocol. The USPTO must forward the said application to the WIPO within 2 months to maintain the filing date.

(4) The WIPO reviews international application and determines if it is “formal,” that is, if it meets minimum filing requirements. If “formal,” an “international registration” (IR) is issued by the WIPO, and a “request for extension of protection” is forwarded by the WIPO to the designated country or countries. The trademark “Office” or “Offices” of the designated country or countries then proceed to examine the IR under the standards of the individual country. If “informal,” the WIPO notifies the USPTO of the problem or problems with the application, and the USPTO, in turn, notifies the applicant. The applicant has 3 months to remedy the problem. If the “informality” is based on the identification of goods or services, the applicant must file its amendment through the USPTO using a special TEAS form, and should do so at least one month before the 3-month expiration date [this requirement has temporarily been suspended, and a paper submission is required]. For other refusals unrelated to the identification of goods, the applicant should file a response directly to the WIPO.