[E-trademarks] Recording Security Interest Against 66(a) Registrations

[Shawn Shadow]

One of our attorney clients dealt with this recently. The security interest has to be recorded against the home registration. That trademark office then forwards it to WIPO, who disseminates it to all of the designated countries' trademark offices.


[cid3594913273*image002.png at 01D8DE32.5ADBE080]
Shawn M. Shadow
CEO

810.357.1225
www.1027tm.com<http://www.1027tm.com>

Let everyone else be normal. We'll be exceptional.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Jonathan M. Gelchinsky via E-trademarks
Sent: Friday, September 5, 2025 11:27 AM
To: e-trademarks at oppedahl-lists.com
Cc: Jonathan M. Gelchinsky <jgelchinsky at PierceAtwood.com>
Subject: [E-trademarks] Recording Security Interest Against 66(a) Registrations

Has anyone dealt with the issue of trying to record a security agreement with the USPTO against in-bound Madrid/66(a) registrations? The PTO's system flatly blocks you from proceeding through the form because the serial number triggers the prohibition on recording assignments against 66(a) registrations.

However, WIPO does not seem to have a mechanism to record security agreements (unless I'm missing it).

We seem to be stuck in a loop, and I am wondering if anyone here has figured out how to handle this.

The situation likely does not qualify for submission per 37 CFR 7.24, where the PTO must under limited conditions forward the request filed with the PTO through to the IB, particularly where there is a court order to do so, or an inability to obtain the signature of the holder on a WIPO form.

Many thanks!

Jonathan M. Gelchinsky
PIERCE ATWOOD LLP<http://www.pierceatwood.com>
Merrill's Wharf
254 Commercial Street
Portland, ME 04101
PH 207.791.1203
FAX 207.791.1350
100 Summer Street
22nd Floor
Boston, MA 02110
PH 617.488.8167
FAX 617.824.2020
jgelchinsky at PierceAtwood.com<mailto:jgelchinsky at PierceAtwood.com>
Admitted in ME, MA, NY
This e-mail was sent from Pierce Atwood. It may contain information that is privileged and confidential. If you suspect that you were not intended to receive it please delete it and notify us as soon as possible.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250905/83e457d2/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 7364 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250905/83e457d2/attachment.png>