[Federal Register Volume 69, Number 185 (Friday, September 24, 2004)]
[Rules and Regulations]
[Pages 57181-57186]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-21476]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. 2004-T-037]
RIN 0651-AB78


New Mailing Addresses for Paper Submissions of Trademark-Related 
Correspondence and Madrid Protocol Rules Change

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'') is 
amending its rules to provide for new mailing addresses for trademark-
related correspondence submitted on paper. The Office is also amending 
some of the rules that govern the submission of documents pursuant to 
the Protocol Relating to the Madrid Agreement Concerning the 
International Registration of Marks (``Madrid Protocol'') in the United 
States. Specifically, the Office is: Removing the requirement that 
international applications, subsequent designations, responses to 
notices of irregularity issued by the International Bureau of the World 
Intellectual Property Organization (``IB''), and requests for 
transformation be filed through the Trademark Electronic Application 
System (``TEAS''); limiting the requirement that fees payable to the IB 
for international applications, subsequent designations, and requests 
to record changes of ownership in the International Register be paid at 
the time of submission only if the document is filed through TEAS; and 
designating new mailing addresses for trademark-related correspondence 
and paper-filed international applications, subsequent designations, 
responses to notices of irregularity, requests to record changes in the 
International Register, requests for transformation, and petitions to 
the Director to review an action of the Office's Madrid Processing Unit 
(``MPU'').

DATES: Effective Date: October 4, 2004.

FOR FURTHER INFORMATION CONTACT: Cheryl L. Black, Office of the 
Commissioner for Trademarks, by telephone at (703) 308-8910, ext. 153, 
or by e-mail to [email protected].

SUPPLEMENTARY INFORMATION:

Background

New Mailing Addresses for Paper Submissions of Trademark-Related 
Documents

    The Office's Trademark Operation, as well as its Trademark Trial 
and Appeal Board, are currently housed at 2900 Crystal Drive in 
Arlington, Virginia, and Sec.  2.190 requires that all trademark-
related correspondence filed on paper, except for requests to record 
documents in the Assignment Services Division and requests for copies 
of trademark documents, be sent to that location.
    The Trademark Operation and the Trademark Trial and Appeal Board 
are moving to a new facility in Alexandria, Virginia. It is expected 
that this move will commence on or about October 4, 2004, and will be 
completed on or about November 9, 2004. The Office is therefore 
amending Sec.  2.190 to provide for new mailing addresses for all 
paper-filed trademark-related correspondence, except for requests to 
record documents in the Assignment Services Division and requests for 
copies of trademark documents.
    The Office continues to encourage trademark applicants and 
registrants to file documents with the Trademark Operation via the 
Trademark Electronic Application System (``TEAS''), available at http://www.uspto.gov, and to file documents with the Trademark Trial and 
Appeal Board via the Electronic System for Trademark Trials and Appeals 
(``ESTTA''), available at http://estta.uspto.gov.

Madrid Protocol Rules Changes

    The Madrid Protocol is an international treaty that allows a 
trademark owner to seek registration in any of the countries and 
organizations that have joined the Protocol (``Contracting Parties''), 
by submitting a single international application. The international 
application must be based on a trademark application filed in or 
registration issued by the trademark office of one of the Contracting 
Parties (``basic application'' or ``basic registration''), and must be 
submitted to the IB through the trademark office of the Contracting 
Party in which the basic application or registration is held (``Office 
of Origin''). Before forwarding the international application to the 
IB, the Office of Origin must certify that the information in the 
international application corresponds to the information in the basic 
application or registration.
    The Madrid Protocol became effective in the United States on 
November 2, 2003. The Madrid Protocol Implementation Act of 2002, 
Public Law

[[Page 57182]]

107-273, 116 Stat. 1758, 1913-1921 (``MPIA'') amended the Trademark Act 
to provide that: (1) The owner of a U.S. application or registration 
may seek protection of its mark in any of the countries and 
organizations party to the Madrid Protocol by submitting a single 
international application to the IB through the Office; and (2) the 
holder of an international registration may request an extension of 
protection of the international registration to the United States. A 
notice of final rule making amending the Trademark Rules of Practice to 
incorporate the MPIA was published at 68 FR 55748 (Sept. 26, 2003).
    The rules required: (1) That filers use TEAS to submit 
international applications, subsequent designations, responses to 
notices of irregularity, requests to record changes in the 
International Register, and requests for transformation; and (2) that 
international fees required by the IB for international applications, 
subsequent designations and requests to record changes in the 
International Register be paid through TEAS at the time of submission. 
Due to unforeseen technical difficulties, the deployment of Madrid-
related TEAS forms has been delayed. Therefore, these requirements of 
the rules were temporarily waived in a notice published at 68 FR 74479 
(Dec. 24, 2003). The Office is amending its rules to incorporate these 
changes.
    The Madrid Protocol, Common Regulations Under the Madrid Agreement 
Concerning the International Registration of Marks and the Protocol 
Relating to That Agreement (April 1, 2004) (``Common Regs.''), and 
Guide to International Registration (2004) (``Guide''), are available 
on the IB's Web site, at http://www.wipo.int/madrid. The Common Regs. 
are the procedures agreed to by the Contracting Parties, pursuant to 
Madrid Protocol Article 10(2)(iii).
    References below to ``the Act,'' ``the Trademark Act,'' or ``the 
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051, et seq., 
as amended.

Discussion of Specific Rules

    The Office is amending rules 2.190, 2.195, 2.197, 7.4, 7.7, 7.11, 
7.14, 7.21, 7.23, 7.25, and 7.31.
    The Office is revising Sec.  2.190(a) to set forth a new mailing 
address for all paper-filed trademark-related correspondence (except 
requests to record documents in the Assignment Services Division, 
requests for copies of trademark documents, and certain documents filed 
pursuant to the Madrid Protocol), and adding a new Sec.  2.190(e) to 
set forth a new mailing address for the following Madrid-related paper-
filed documents: international applications under Sec.  7.11; 
subsequent designations under Sec.  7.21; responses to notices of 
irregularity under Sec.  7.14; requests to record changes in the 
International Register under Sec.  7.23 and Sec.  7.24; requests for 
transformation under Sec.  7.31; and petitions to the Director to 
review an action of the MPU.
    The Office is amending Sec.  2.195(d)(3) to delete the word ``and'' 
after the semi-colon, and amending Sec.  2.195(d)(4) to replace the 
period with a semi-colon and to add the word ``and'' after the semi-
colon.
    The Office is adding a new Sec.  2.195(d)(5), to prohibit the use 
of facsimile transmission to file international applications, 
subsequent designations, responses to notices of irregularity, requests 
for transformation, and requests to record changes in the International 
Register.
    The Office is revising Sec.  2.197(a)(2) to provide that the 
certificate of mailing or transmission procedure described in Sec.  
2.197(a)(1) does not apply to international applications, subsequent 
designations, responses to notices of irregularity, requests for 
transformation, and requests to record changes in the International 
Register.
    The Office is redesignating the current Sec.  7.4 as Sec.  7.4(a).
    The Office is adding a new Sec.  7.4(b) to designate a new mailing 
address for paper-filed international applications, subsequent 
designations, responses to notices of irregularity, requests to record 
changes in the International Register, requests for transformation, and 
petitions to the Director to review an action of the MPU.
    The Office is adding a new Sec.  7.4(b)(1), to provide that 
international applications, subsequent designations, requests to record 
changes in the International Register, and petitions to the Director to 
review an action of the MPU, when filed by mail, will be accorded the 
date of receipt in the Office, unless they are sent by Express Mail 
pursuant to Sec.  2.198, in which case they will be accorded the date 
of deposit with the United States Postal Service.
    The Office is adding a new Sec.  7.4(b)(2), to provide that 
requests for transformation and responses to notices of irregularity, 
when filed by mail, will be accorded the date of receipt in the Office. 
International applicants are advised that a response to a notice of 
irregularity under Sec.  7.14 must be received at the IB before the end 
of the response period set forth in the IB's notice. Receipt in the 
Office does not satisfy this requirement. See Sec.  7.14(e); IB's Guide 
at B.I.05.01.
    The Office is adding a new Sec.  7.4(c) to designate a location for 
hand delivery of international applications, subsequent designations, 
responses to notices of irregularity, requests to record changes in the 
International Register, requests for transformation, and petitions to 
the Director to review an action of the MPU.
    The Office is adding a new Sec.  7.4(d), to prohibit the use of 
facsimile transmission to file international applications, subsequent 
designations, responses to notices of irregularity, requests for 
transformation, and requests to record changes in the International 
Register.
    The Office is adding a new Sec.  7.4(e), to provide that the 
certificate of mailing or transmission procedure described in Sec.  
2.197(a)(1) does not apply to international applications, subsequent 
designations, responses to notices of irregularity, requests for 
transformation, and requests to record changes in the International 
Register. This is consistent with the revision to Sec.  2.197(a)(2), 
discussed above.
    The Office is revising Sec.  7.7(a) to provide that fees for 
international applications, subsequent designations, and requests to 
record changes of ownership may be paid to the IB through the Office 
only when the documents are filed through TEAS. At present, the Office 
is unable to process international fees for paper filings.
    The Office is adding a new Sec.  7.7(c) to provide that all fees 
for paper filings must be paid directly to the IB. These fees can be 
paid to the IB either before or after submission of the document to the 
Office. However, fees paid after the document is received by the IB 
could result in a notice of irregularity.
    The Office is redesignating Sec.  7.7(c) as Sec.  7.7(d).
    The Office is revising Sec.  7.11(a) to remove the requirement that 
an international application be filed through TEAS and to permit the 
filing of an international application either through TEAS, or on the 
official paper form issued by the IB, currently available on the IB's 
Web site at http://www.wipo.int/madrid. Inasmuch as deployment of the 
TEAS form has been delayed due to unforeseen technical difficulties, 
international applications must be filed on paper until the TEAS form 
is posted on the Office's Web site. When the TEAS form is posted, 
applicants will have the option to file international applications 
either on paper or through TEAS.
    Revised Sec.  7.11(a) requires that an international application 
filed on paper be presented on the official paper form issued by the 
IB, currently available on the IB's Web site at http://

[[Page 57183]]

www.wipo.int/madrid. MM2 is the official IB form for an application for 
international registration under the Madrid Protocol. The IB does not 
accept paper applications that are not presented on the official IB 
form. The form cannot be hand-written. Madrid Protocol Article 3(1); 
Common Regs. 9(2)(a) and 11(4)(a)(i). When submitting an international 
application on paper, applicants should complete the official form 
online, print the completed form, and submit it to the Office. For 
instructions on completing the IB's official international application 
form, see the IB's Guide at B.II.07.01-20.11.
    The Office is revising Sec.  7.11(a)(3) by breaking it into 
subsections 7.11(a)(3)(i) through 7.11(a)(3)(iii), for purposes of 
clarity.
    The Office is adding a new Sec.  7.11(a)(3)(iv), to require, for 
international applications filed on paper, that the depiction of the 
mark appear no larger than 3.15 inches (8 cm) high by 3.15 inches (8 
cm) wide, and that the mark be placed in the box designated by the IB 
on the IB's official form. This is required by Common Reg. 9(4)(a)(v). 
The size requirement is consistent with the size requirement of Sec.  
2.54(b).
    The Office is revising Sec.  7.11(a)(9) to delete reference to fees 
payable to the IB for international applications. These fees are 
provided for in new Sec.  7.11(a)(10).
    The Office is redesignating Sec.  7.11(a)(10) as Sec.  7.11(a)(11) 
and revising it to provide that if an international application is 
filed through TEAS, in order to be accorded a date of receipt in the 
Office it must include the international application fees for all 
classes, and the fees for all designated Contracting Parties identified 
in the application. This requirement does not apply to international 
applications filed on paper. Under new Sec.  7.7(c), international fees 
for paper applications must be paid directly to the IB, and may be paid 
either before or after submission of the international application to 
the Office. However, fees paid after the international application is 
received by the IB could result in a notice of irregularity. The 
requirement in Sec.  7.11(a)(9) that the U.S. certification fee 
required by Sec.  7.6 be paid at the time of submission in order to 
obtain a date of receipt applies to both TEAS and paper applications.
    The Office is redesignating Sec.  7.11(a)(11) as Sec.  7.11(a)(12), 
and revising it to provide that an e-mail address for correspondence is 
required only when the international application is filed through TEAS. 
The inclusion of an e-mail address in paper applications is encouraged, 
but not mandatory.
    The Office is revising Sec.  7.14(e) to remove the requirement that 
a response to a notice of irregularity issued by the IB be filed 
through TEAS. Deployment of the TEAS form has been delayed due to 
unforeseen technical difficulties. Until the TEAS form is available, 
responses to notices of irregularity must be filed on paper. When the 
TEAS form is operational, applicants will have the option to file 
responses either on paper or through TEAS.
    The Office is revising Sec.  7.21(b) to remove the requirement that 
a subsequent designation be submitted through TEAS, and permit the 
submission of a subsequent designation either through TEAS or on the 
official paper form issued by the IB. Deployment of the TEAS form has 
been delayed due to unforeseen technical difficulties. Until the TEAS 
form is available, subsequent designations must be filed on paper. When 
the TEAS form is posted, holders will have the option to file 
subsequent designations either on paper or through TEAS.
    Revised Sec.  7.21(b) requires that a subsequent designation filed 
on paper be presented on the official paper form issued by the IB, 
currently available on the IB's Web site at http://www.wipo.int/madrid. 
MM4 is the official IB form for a designation subsequent to the 
international registration under the Madrid Protocol. The IB does not 
accept paper subsequent designations that are not presented on the 
official IB form. The form cannot be hand-written. Madrid Protocol 
Article 3ter(2); Common Reg. 24(2)(b). When submitting a 
subsequent designation on paper, the holder should complete the 
official form online, print the completed form, and submit it to the 
Office. Completed subsequent designations may also be filed directly at 
the IB. The IB's Guide contains instructions for completing the 
subsequent designation form, at B.II.43.01-44.03.
    The Office is revising Sec.  7.21(b)(7) to delete reference to 
subsequent designation fees payable to the IB. These fees are provided 
for in new Sec.  7.21(a)(8).
    The Office is revising Sec.  7.21(a)(8) to provide that a 
subsequent designation filed through TEAS must include the subsequent 
designation fees payable to the IB in order to obtain a date of receipt 
in the Office. This requirement does not apply to subsequent 
designations filed on paper. Under new Sec.  7.7(c), fees for paper 
subsequent designations must be paid directly to the IB, and may be 
paid either before or after submission of the subsequent designation to 
the Office. However, fees paid after the subsequent designation is 
received by the IB could result in a notice of irregularity. The 
requirement that the U.S. transmittal fee required by Sec.  7.6 be paid 
at the time of submission in order to obtain a date of receipt remains 
unchanged for paper subsequent designations.
    The Office is redesignating Sec.  7.21(b)(8) as Sec.  7.21(b)(9), 
and revising it to provide that an e-mail address for correspondence is 
required only if the subsequent designation is filed through TEAS. The 
inclusion of an e-mail address in a paper subsequent designation is 
encouraged, but not mandatory.
    The Office is revising Sec.  7.23(a)(8) to remove the requirement 
that a request to record a change of ownership include the recording 
fee required by the IB. The Office currently does not have an 
electronic form available for requests to record changes of ownership, 
and cannot process the international fees for paper filings. Therefore, 
under Sec.  7.7(c), if a request to record a change of ownership is 
submitted on paper, the fee must be paid directly to the IB, and may be 
paid either before or after submission of the request to the Office. 
However, fees paid after the request is received by the IB could result 
in a notice of irregularity. The requirement that the U.S. transmittal 
fee required by Sec.  7.6 be paid at the time the request is submitted 
remains unchanged.
    The Office is revising Sec.  7.25(a) to delete the designation of 
Sec.  2.172 as a section of part 2 of this chapter that does not apply 
to registered extensions of protection of international registrations 
to the United States. This will allow parties to file requests to 
surrender registered extensions of protection of an international 
registration to the United States either directly with the IB or with 
the Office. If the request to surrender is filed through the Office, 
the Office will notify the IB of the surrender.
    The Office is amending Sec.  7.31(a) to delete the requirement that 
a request for transformation be filed through TEAS. The Office 
currently does not have a TEAS form available for requests for 
transformation. Until the TEAS form is available on the Office's Web 
site, requests for transformation must be filed on paper. When the TEAS 
form is operational, holders will be able to file requests for 
transformation either on paper or through TEAS.

Rule Making Requirements

Administrative Procedure Act

    This final rule merely involves rules of agency practice and 
procedure within

[[Page 57184]]

the meaning of 5 U.S.C. 553(b)(A), as it merely provides new mailing 
addresses for certain trademark-related correspondence and eliminates 
certain existing procedural requirements related to filings under the 
Madrid Protocol that were waived pursuant to a notice published at 68 
FR 74479 (Dec. 24, 2003) and incorporates agency procedure and practice 
to implement the changes therein. Therefore, this final rule may be 
adopted without prior notice and opportunity for public comment under 5 
U.S.C. 553(b) and (c), or thirty-day advance publication under 5 U.S.C. 
553(d).

Regulatory Flexibility Act

    The changes in this final rule merely: (1) Set forth the mailing 
addresses that should be used for mailing certain trademark-related 
correspondence to the Office; and (2) incorporate agency procedures and 
practice put in place to ensure compliance with a notice published at 
68 FR 74479 (Dec. 24, 2003) eliminating certain existing requirements 
for trademark-related filings under the Madrid Protocol. This final 
rule package does not impose any new fees on members of the public, and 
places no additional economic burden on large or small entities.
    This final rule change is a rule of agency practice and procedure 
under 5 U.S.C. 553(b)(A), and prior notice and an opportunity for 
public comment therefore is not required pursuant to 5 U.S.C. 553(b)(A) 
(or any other law). See Bachow Communications Inc. v. FCC, 237 F.3d 
683, 690 (D.C. Cir. 2001) (rules governing an application process are 
``rules of agency organization, procedure, or practice'' and exempt 
from the Administrative Procedure Act's notice and comment 
requirement); Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 
USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated 
under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) 
are not substantive rules (to which the notice and comment requirements 
of the Administrative Procedure Act apply)); Fressola v. Manbeck, 36 
USPQ2d 1211, 1215 (D.D.C. 1995) (``it is doubtful whether any of the 
rules formulated to govern patent and trade-mark practice are other 
than `interpretative rules, general statements of policy, * * * 
procedure, or practice' '' (quoting C.W. Ooms, The United States Patent 
Office and the Administrative Procedure Act, 38 Trademark Rep. 149, 153 
(1948). Thus, the provisions of the Regulatory Flexibility Act are not 
applicable to this rule making.

Executive Order 13132

    This rule making does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

    This rule making has been determined not to be significant for 
purposes of Executive Order 12866.

Paperwork Reduction Act

    The final rules are in conformity with the requirements of the 
Paperwork Reduction Act of 1995 (``PRA'') (44 U.S.C. 3501 et seq.).
    An information collection package supporting the information 
requirements set forth in this rule was approved by the Office of 
Management and Budget under 0651-0051. That information collection 
package included a requirement that the following documents be 
submitted electronically: international applications under Sec.  7.11, 
subsequent designations under Sec.  7.21, responses to notices of 
irregularity under Sec.  7.14, and requests for transformation under 
Sec.  7.31. This final rule removes the requirement that these forms be 
filed electronically, and instead permits filing either electronically 
or on paper. The information to be provided on paper is the same 
information as that collected by the electronic forms described in the 
information collection package that was approved under 0651-0051.
    These final rules require that international applications and 
subsequent designations, when submitted on paper, be presented on the 
official forms provided by the IB. The IB will not accept paper 
international applications and subsequent designations that are not 
presented on the official IB form. Madrid Protocol Article 3(1) and 
3\ter\(2); Common Regs. 9(2)(a), 11(4)(a)(i), and 24(2)(b). The IB's 
paper forms collect the same information required in the electronic 
forms approved under 0651-0051.
    Neither the Office nor the IB provides a paper form for responses 
to notices of irregularity or requests for transformation. The 
applicant/holder must provide the same information required in the 
electronic forms approved under 0651-0051, using the form of their 
choice.
    There are no other new information collection requirements in this 
final rule.
    The public reporting burden is estimated to average as follows: 
Fifteen minutes for international trademark applications; three minutes 
for subsequent designations; ten minutes for responses to notices of 
irregularities issued by the IB; and five minutes for requests to 
transform cancelled extensions of protection into applications for 
registration under section 1 or 44 of the Trademark Act. These time 
estimates include the time for reviewing instructions, searching 
existing data sources, gathering and maintaining the data needed, and 
completing and reviewing the collection of information. Comments are 
invited on: (1) Whether the collection of information is necessary for 
proper performance of the functions of the agency, (2) the accuracy of 
the agency's estimate of the burden, (3) ways to enhance the quality, 
utility, and clarity of the information to be collected, and (4) ways 
to minimize the burden of the collection of information to respondents.
    Send comments regarding this burden estimate, or any other aspect 
of this data collection, including suggestions for reducing the burden, 
to the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 
22202-3514 (Attn: Ari Leifman), and to the Office of Information and 
Regulatory Affairs, OMB, 725 17th Street, NW., Washington, DC 20503 
(Attn: USPTO Desk Officer).
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, Trademarks.


    For the reasons given in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is 
amending parts 2 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    1. Amend Sec.  2.190 by revising paragraph (a) and adding a new 
paragraph (e) to read as follows:

[[Page 57185]]

Sec.  2.190  Addresses for trademark correspondence with the United 
States Patent and Trademark Office.

    (a) Trademark correspondence. In general. All trademark-related 
documents filed on paper, except documents sent to the Assignment 
Services Division for recordation, requests for copies of trademark 
documents, and certain documents filed under the Madrid Protocol as 
specified in paragraph (e) of this section, should be addressed to: 
Commissioner for Trademarks, PO Box 1451, Alexandria, VA 22313-1451.
* * * * *
    (e) Certain Documents Relating to International Applications and 
Registrations. International applications under Sec.  7.11 of this 
title, subsequent designations under Sec.  7.21 of this title, 
responses to notices of irregularity under Sec.  7.14 of this title, 
requests to record changes in the International Register under Sec.  
7.23 and Sec.  7.24 of this title, requests for transformation under 
Sec.  7.31 of this title, and petitions to the Director to review an 
action of the Office's Madrid Processing Unit, when filed by mail, must 
be mailed to: Commissioner for Trademarks, PO Box 16471, Arlington, VA 
22215-1471, Attention MPU.

    2. Amend Sec.  2.195 by revising paragraphs (d)(3) and (d)(4), and 
adding a new paragraph (d)(5) to read as follows:


Sec.  2.195  Receipt of trademark correspondence.

* * * * *
    (d) * * *
    (3) Correspondence to be filed with the Trademark Trial and Appeal 
Board, except notices of ex parte appeal;
    (4) Requests for cancellation or amendment of a registration under 
section 7(e) of the Trademark Act; and certificates of registration 
surrendered for cancellation or amendment under section 7(e) of the 
Trademark Act; and
    (5) Madrid-related correspondence submitted under Sec.  7.11, Sec.  
7.21, Sec.  7.14, Sec.  7.23, Sec.  7.24, or Sec.  7.31 of this title.
* * * * *

    3. Amend Sec.  2.197 by revising paragraph (a)(2) to read as 
follows:


Sec.  2.197  Certificate of mailing or transmission.

    (a) * * *
    (2) The procedure described in paragraph (a)(1) of this section 
does not apply to:
    (i) Applications for the registration of marks under 15 U.S.C. 1051 
or 1126; and
    (ii) Madrid-related correspondence filed under Sec.  7.11, Sec.  
7.21, Sec.  7.14, Sec.  7.23, Sec.  7.24 or Sec.  7.31 of this title.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

    4. Revise Sec.  7.4 to read as follows:


Sec.  7.4  Receipt of correspondence.

    (a) Correspondence Filed Through TEAS. Correspondence relating to 
international applications and registrations and requests for extension 
of protection submitted through TEAS will be accorded the date and time 
on which the complete transmission is received in the Office based on 
Eastern Time. Eastern Time means eastern standard time or eastern 
daylight time, as appropriate.
    (b) Correspondence Filed By Mail. International applications under 
Sec.  7.11, subsequent designations under Sec.  7.21, responses to 
notices of irregularity under Sec.  7.14, requests to record changes in 
the International Register under Sec.  7.23 and Sec.  7.24, requests 
for transformation under Sec.  7.31, and petitions to the Director to 
review an action of the Office's Madrid Processing Unit, when filed by 
mail, must be addressed to: Commissioner for Trademarks, P.O. Box 
16471, Arlington, VA 22215-1471, Attn: MPU.
    (1) International applications under Sec.  7.11, subsequent 
designations under Sec.  7.21, requests to record changes in the 
International Register under Sec.  7.23 and Sec.  7.24, and petitions 
to the Director to review an action of the Office's Madrid Processing 
Unit, when filed by mail, will be accorded the date of receipt in the 
Office, unless they are sent by Express Mail pursuant to Sec.  2.198 of 
this title, in which case they will be accorded the date of deposit 
with the United States Postal Service.
    (2) Responses to notices of irregularity under Sec.  7.14 and 
requests for transformation under Sec.  7.31, when filed by mail, will 
be accorded the date of receipt in the Office.
    (c) Hand-Delivered Correspondence. International applications under 
Sec.  7.11, subsequent designations under Sec.  7.21, responses to 
notices of irregularity under Sec.  7.14, requests to record changes in 
the International Register under Sec.  7.23 and Sec.  7.24, requests 
for transformation under Sec.  7.31, and petitions to the Director to 
review an action of the Office's Madrid Processing Unit, may be 
delivered by hand during the hours the Office is open to receive 
correspondence. Madrid-related hand-delivered correspondence must be 
delivered to the Trademark Assistance Center, AE00C55, Madison East, 
600 Dulany Street, Alexandria, VA 22313.
    (d) Facsimile Transmission Not Permitted. The following documents 
may not be sent by facsimile transmission, and will not be accorded a 
date of receipt if sent by facsimile transmission:
    (1) International applications under Sec.  7.11;
    (2) Subsequent designations under Sec.  7.21;
    (3) Responses to notices of irregularity under Sec.  7.14;
    (4) Requests to record changes of ownership under Sec.  7.23;
    (5) Requests to record restrictions of the holder's right of 
disposal, or the release of such restrictions, under Sec.  7.24; and
    (6) Requests for transformation under Sec.  7.31.
    (e) Certificate of Mailing or Transmission Procedure Does Not 
Apply. The certificate of mailing or transmission procedure provided in 
Sec.  2.197 does not apply to the documents specified in paragraph (d) 
of this section.

    5. Amend Sec.  7.7 by revising paragraph (a) introductory text, 
redesignating paragraph (c) as paragraph (d), and adding a new 
paragraph (c) to read as follows:


Sec.  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:
* * * * *
    (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/.

    6. Amend Sec.  7.11 by revising paragraphs (a), introductory text 
(a)(3), (a)(9), (a)(10) and (a)(11), and adding a new paragraph (a)(12) 
to read as follows:


Sec.  7.11  Requirements for international application originating from 
the United States.

    (a) The Office will grant a date of receipt to an international 
application That is either filed through TEAS, or typed on the official 
paper form issued by the International Bureau. The

[[Page 57186]]

international application must include all of the following:
* * * * *
    (3) A reproduction of the mark that is the same as the mark in the 
basic application and/or registration and that meets the requirements 
of Sec.  2.52 of this title.
    (i) If the mark in the basic application and/or registration is 
depicted in black and white and the basic application or registration 
does not include a color claim, the reproduction of the mark in the 
international application must be black and white.
    (ii) If the mark in the basic application or registration is 
depicted in black and white and includes a color claim, the 
international application must include both a black and white 
reproduction of the mark and a color reproduction of the mark.
    (iii) If the mark in the basic application and/or registration is 
depicted in color, the reproduction of the mark in the international 
application must be in color.
    (iv) If the international application is filed on paper, the mark 
must be no more than 3.15 inches (8 cm) high by 3.15 inches (8 cm) 
wide, and must appear in the box designated by the International Bureau 
on the International Bureau's official form;
* * * * *
    (9) The certification fee required by Sec.  7.6;
    (10) If the application is filed through TEAS, the international 
application fees for all classes, and the fees for all designated 
Contracting Parties identified in the international application (see 
Sec.  7.7);
    (11) A statement that the applicant is entitled to file an 
international application in the Office, specifying that applicant: is 
a national of the United States; has a domicile in the United States; 
or has a real and effective industrial or commercial establishment in 
the United States. Where an applicant's address is not in the United 
States, the applicant must provide the address of its U.S. domicile or 
establishment; and
    (12) If the international application is filed through TEAS, an e-
mail address for receipt of correspondence from the Office.
* * * * *

    7. Amend Sec.  7.14 by revising paragraph (e) to read as follows:


Sec.  7.14  Correcting irregularities in international application.

    (a) * * *
    (e) Procedure for response. To be considered timely, a response 
must be received by the International Bureau before the end of the 
response period set forth in the International Bureau's notice. Receipt 
in the Office does not fulfill this requirement. Any response submitted 
through the Office for forwarding to the International Bureau should be 
submitted as soon as possible, but at least one month before the end of 
the response period in the International Bureau's notice. The Office 
will not process any response submitted to the Office after the 
International Bureau's response deadline.

    8. Amend Sec.  7.21 by revising paragraphs (b) introductory text, 
(b)(7), and (b)(8), and adding a new paragraph (b)(9), to read as 
follows:


Sec.  7.21  Subsequent designation.

* * * * *
    (b) The Office will grant a date of receipt to a subsequent 
designation that is either filed through TEAS, or typed on the official 
paper form issued by the International Bureau. The subsequent 
designation must contain all of the following:
* * * * *
    (7) The U.S. transmittal fee required by Sec.  7.6;
    (8) If the subsequent designation is filed through TEAS, the 
subsequent designation fees (see Sec.  7.7); and
    (9) If the subsequent designation is filed through TEAS, an e-mail 
address for receipt of correspondence from the Office.
* * * * *

    9. Amend Sec.  7.23 by revising paragraph (a)(8) to read as 
follows:


Sec.  7.23  Requests for recording assignments at the International 
Bureau.

* * * * *
    (a) * * *
    (8) The U.S. transmittal fee required by Sec.  7.6.
* * * * *
    10. Amend Sec.  7.25 by revising paragraph (a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.130-2.131, 2.160-2.166, 2.168, 2.173, 
2.175, 2.181-2.186, and 2.197, all sections in part 2 of this chapter 
and all sections of part 10 of this chapter apply to a request for 
extension of protection of an international registration to the United 
States, including sections related to proceedings before the Trademark 
Trial and Appeal Board, unless stated otherwise.
* * * * *

    11. Amend Sec.  7.31 by revising paragraph (a) introductory text to 
read as follows:


Sec.  7.31  Requirements for transformation of an extension of 
protection to the United States into a U.S. application.

* * * * *
    (a) The holder of the international registration must file a 
request for transformation within three months of the date of 
cancellation of the international registration and include:
* * * * *

    Dated: September 17, 2004.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 04-21476 Filed 9-23-04; 8:45 am]
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