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“Why Can’t I File an Assignment of a U.S. Trademark with USPTO?”

By: Darlena Stark, COGENCY GLOBAL INC. on Tue, May 26, 2015
Trademark Assignment USPTOFilers of U.S. trademark assignments may discover that some of the properties listed on the schedules or exhibits to their documents cannot be assigned at the U.S. Patent and Trademark Office (USPTO), even when the marks appear in the U.S. trademark database.

Why can’t some U.S. trademarks be assigned through the USPTO system? In some cases, it may be because the marks are already registered with the Madrid Protocol.

This article will explain why certain marks cannot be assigned using the USPTO’s ETAS (Electronic Trademark Assignment System). It will also provide a brief overview of what the Madrid Protocol is, how the USPTO manages these properties and how the Protocol allows the recording of a security interest on a trademark outside the authority of the USPTO.

Assignment of Certain Properties Not Allowed at the USPTO

When filing a trademark assignment with the USPTO, a typical scenario filers may encounter is that a property from a schedule cannot be entered into ETAS. The below warning displays onscreen:

Assignment for property number 4527377 may not be filed via the USPTO; you must file Assignment with the Madrid International Bureau.

What is the Madrid Protocol?

The Madrid Protocol is a treaty that facilitates filing of international trademarks with WIPO, the World Intellectual Property Organization. Within the WIPO’s International Bureau (IB) is a Madrid Registry that is responsible for international registrations under the Madrid Protocol.

Ninety-five countries (“Contracting Parties”) are party to the Protocol. One international application replaces many national applications filed separately. International registrations last for ten years and are renewable.[1]

How the USPTO Cooperates with WIPO

The USPTO’s Madrid Processing Unit (MPU) works in conjunction with WIPO when a mark originates in the U.S. The USPTO is then considered the “home” IP office (office of origin).

No matter where protection of a mark is sought, an international application is always filed with the office of origin. Countries other than the originating country can be designated in order to widen the scope of a trademark’s protection. This action is called “designating a Contracting Party.” Often, a registration holder has protection abroad and seeks protection in the U.S. The U.S. would in this case be designated. The registered mark is given a USPTO filing basis of 66(a) to signify its intent to extend protection to the U.S.[2]

The MPU ensures certain provisions are met in the application before forwarding it to the Madrid Registry.

Filing Security Interests against International Registrations

A security interest is one type of restriction on a holder’s rights to dispose of his/her intellectual property.

Similar to when applicants/registrants designate Contracting Parties (countries other than the originating country) when registering a mark, they can designate Contracting Parties where they want a restriction to be effective. For restrictions that designate the U.S. and affect disposal of a registration in the U.S., the MPU enables a registration holder to “file certain requests with the IB through the USPTO, such as requests to record changes of ownership and restrictions on the holder's right to dispose of an international registration.[3]

All other requests to record a restriction/security interest on trademarks go through the International Bureau of WIPO. It will accept either an MM19 form, or a letter of request. Filing is free of charge. Once the security interest is recorded, all interested parties can see the published restriction in the WIPO Gazette of International Marks and the ROMARIN database for trademarks. Only the Gazette is an official Madrid system publication.

In conclusion, filers of U.S. trademark assignments may encounter Madrid Protocol marks registered with WIPO that cannot be assigned through the USPTO’s channels, despite the fact that they appear on the USPTO database. These marks can, however, be assigned through a separate WIPO filing.

 

[1] http://www.wipo.int/madrid/en/how_madrid_works.html

[2] 37 CFR 2.34

[3] TMEP 1901, 1906.01(b)

 

This article is provided for informational purposes only and should not be considered, or relied upon, as legal advice.

Topics: Intellectual Property Due Diligence