[E-trademarks] Madrid Extensions - Refusals Must be Made within 18 Months

Fri Nov 17 11:08:31 EST 2023

Note, by the way, that there is a listserv dedicated to Madrid 
Protocol.  See 
https://oppedahl-lists.com/mailman/listinfo/madrid_oppedahl-lists.com .

The US joined the Madrid system in 2003.  Shortly after that, the USPTO 
sort of got egg on its face a few times by snoozing through the 18 
months and only later figuring out that it wished it had mailed out a 
refusal.

And maybe even more embarrassing, the USPTO would publish a case for 
opposition and the 18 months would run out and then somebody would file 
opposition, and the USPTO would realize that it cannot do anything other 
than grant the registration.  And the opposer was told that their 
proceeding had evaporated.

So after several highly embarrassing incidents, the USPTO programmed 
some computer to automatically generate a document a few days before the 
expiry of the 18 months, and send the document automatically to the IB.  
The document sort of says "dear Madrid applicant, we are telling you now 
that you can't count on the automatic protection that would normally 
happen at 18 months.  This piece of paper warns you that anything could 
happen now and you might not get a registration.  Maybe somebody will 
file opposition, maybe the Examiner will belatedly think of a reason to 
mail out a refusal."

So now if you look in any 79-series case, you (nearly always) will see 
such a document being sent to the IB before the end of the 18 months.

On 11/17/2023 8:26 AM, Katherine Markert via E-trademarks wrote:
>
> Hi All,
>
> Has anyone had experience with the USPTO failing to issue a refusal 
> against a 66(a) application within the 18-month period (relevant 
> sections of TMEP pasted below)?  I am curious to know if the USPTO 
> tried to issue an Office Action after expiration of the 18-month 
> period.  If the USPTO fails to act within the required time, does the 
> USPTO actually move the application on to publication (without 
> resolving the “refusals”)?  I am looking to get an understanding for 
> how the rule is carried out in actual practice.  Thanks!
>
>
>   1904.02(g)    Refusal Must Be Made Within 18 Months
>
> Under §68(c) of the Trademark Act and Article 5(2) of the Protocol, 
> the USPTO must notify the IB of any refusal entered in a §66(a) 
> application within 18 months of the date the IB transmits the request 
> for extension of protection to the USPTO. /See/ *TMEP §1904.03(a) 
> <https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1900d1e1322.html>*.
>
> The Trademark database tracks the period of time within which the 
> USPTO must notify the IB of a refusal of protection.  This information 
> appears in the §66(a) international registration data field "Auto 
> Protection Date."  If a refusal is not received by the IB as of this 
> date, the mark receives automatic protection under Article 5(5) of the 
> Protocol.
>
>
>   1904.03(a)    Notice Must Be Sent Within 18 Months
>
> Within 18 months of the date the IB forwards a request for extension 
> of protection, the USPTO must transmit:
>
>   * (1) A notification of refusal based on examination;
>   * (2) A notification of refusal based on the filing of an opposition; or
>   * (3) A notification of the possibility that an opposition may be
>     filed after expiration of the 18-month period.  If the USPTO
>     notifies the IB of the possibility of opposition, it must send the
>     notification of refusal within 7 months after the beginning of the
>     opposition period, or within one month after the end of opposition
>     period, whichever is earlier.
>
> *15 U.S.C. §1141h(c) 
> <https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-25e021ff-877e-48af-992d-5593a18d7808.html>*; 
> Article 5.
>
> If the USPTO does not send a notification of refusal of the request 
> for extension of protection to the IB within 18 months, the request 
> for extension of protection cannot be refused. *15 U.S.C. §1141h(c)(4) 
> <https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-25e021ff-877e-48af-992d-5593a18d7808.html>*; 
> Article 5(5); Regs. Rules 17(2)(iv), 18(1)(a)(iii).  If the USPTO 
> sends a notification of refusal, no grounds of refusal other than 
> those set forth in the notice can be raised more than 18 months after 
> the date on which the IB forwards the request for extension of 
> protection to the USPTO. *15 U.S.C. §1141h(c)(3) 
> <https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-25e021ff-877e-48af-992d-5593a18d7808.html>*.
>
> If upon re-examination the examining attorney determines a new ground 
> of refusal exists that should have been raised in the first Office 
> action, a second Office action raising this new ground may be issued 
> only if time remains in the 18-month period.  In such a case, the 
> examining attorney must ensure that a notification of the new ground 
> of refusal is sent to the IB.
>
> 	
>
> *Katie Markert*
>
> Partner
>
> *Markert & Cominolli PLLC*
>
> *Phone:*585-504-2507
>
> *Email:*km at markertcominolli.com
>
> *Web:*www.markertcominolli.com <http://www.markertcominolli.com/>
>
> 75 S. Clinton Ave., Suite 510, Rochester, NY 14604
>
> Title: LinkedIn - Description: image of LinkedIn icon 
> <http://www.linkedin.com/in/katherinemarkert>
>
>
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