Incoming work for US trademark practitioners

Note: this is a draft document and is thus a "work in progress." Suggestions for improvement are welcome. This document should not be relied upon as authoritative nor as legal advice.

There are several categories of incoming work that will fall to US trademark firms.

Dealing with a refusal of protection. When an international registration is granted that designates the US, the USPTO has eighteen months within which to notify WIPO of a decision to refuse protection. Such a refusal might happen because an Examining Attorney has refused registration or because an opposition has been filed. In addition, if the time for opposition has not yet ended as of the eighteen months, the USPTO may communicate that refusal may happen later if opposition is filed. If the USPTO notifies WIPO of a refusal of protection, then the applicant can engage in further proceedings with the USPTO to attempt to overcome the refusal.

Thus you, as a US trademark practitioner, may receive a request from someone outside the US to respond to a refusal of protection.

The work to be done may, for example, involve advocacy before the Examining Attorney or may involve responding to an opposition.

Replacement of an earlier US registration by an extension of protection. It may sometimes happen that a holder of a US registration may later come to be the holder of a pending or registered extension of protection to the US under an international application or registration. (Indeed given that the US has only recently joined the Madrid Protocol it can be expected that this will come up from time to time.) US rules will permit replacement of the earlier U.S. registration by the extension of protection. The advantage of course is that thereafter, the holder of the international registration can efficiently administer the trademark registration in a single place, reducing the amount of paperwork needed to keep up registrations in many countries.

Thus you, as a US trademark practitioner, may receive a request from someone outside the US to file a request to note a replacement of a US registration by the extension of protection in the US under an international application or registration.

Request for transformation of an extension of protection to the United States into a U.S. application. It will occasionally happen that an international registration which designates the US will get canceled by WIPO. The usual way this would happen is if the underlying basic application or basic registration lapses, which prompts WIPO to cancel the international registration. By definition, since the US was designated, the US cannot have been the country of origin for the international application, and the basic application/registration will not have been filed in the US.

When this cancelation occurs, WIPO notifies the applicant. This gives the applicant three months from the date of cancelation to file, within the USPTO, a request to transform the international application into an ordinary US application.

Thus you, as a US trademark practitioner, may receive a request from someone outside the US to file a transformation request.

The transformation request must be filed electronically, that is, through e-Teas.

Filing of statements of use or excusable non-use. US rules require that a foreign mark-holder who has an extension of protection within the US from an international registration file periodic statements of use or excusable non-use. Failure to file a required statement results in the extension of protection being canceled. Just as with an ordinary US registration, such a statement must be filed between the fifth and sixth years, and must also be filed within the six-month period preceding the end of each ten-year period after the date of registration.

Thus you, as a US trademark practitioner, may receive a request from someone outside the US to file such a statement of use or excusable non-use.