TMEP 1902.09: Dependence and "Central Attack": Restriction, Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years
October 2017 Edition of the TMEP
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1902.09 Dependence and "Central Attack": Restriction, Abandonment, Cancellation, or Expiration of Basic Application or Registration During First 5 Years
For a period of 5 years from the date of the international registration, the registration is dependent on the basic application or basic registration, including the child application or registration of a basic application or registration that has been divided or merged. Article 6(3); see TMEP §1902.12 regarding division or merger of basic application or registration. Under §63 of the Trademark Act, 15 U.S.C. §1141c, and Article 6(4), the USPTO must notify the IB if the basic application and/or registration is restricted, abandoned, cancelled, or expired with respect to some or all of the goods/services listed in the international registration:
- (1) Within five years after the international registration date; or
- (2) More than five years after the international registration date if the restriction, abandonment, or cancellation of the basic application or basic registration resulted from an action that began before the end of the five-year period.
The IB will cancel (or restrict) the international registration accordingly. Article 6(4); Common Reg. 22(2)(b). This is sometimes called "central attack."
The USPTO must notify the IB if there is an appeal, opposition, or cancellation proceeding (or a court proceeding, if the USPTO is aware of the proceeding) pending at the end of the five-year period. The USPTO must notify the IB of the final decision once the proceeding is concluded. Common Regs. 22(1)(b) and (c). The IB will record this notice in the International Register and notify the holder and the designated Contracting Parties.
In view of the above notification requirements, applicants and registrants are encouraged to exercise diligence in monitoring the status of their basic application and/or basic registration ( see TMEP §1705.05). Once the IB cancels or restricts an international registration, it cannot be reinstated. If a problem arises with the basic application and/or registration, or a status inquiry reveals that the basic application and/or registration has become improperly abandoned or cancelled, the applicant or registrant should promptly take corrective action. See TMEP §§1712 et seq. for information regarding reinstatement of abandoned applications and cancelled registrations; and TMEP §§1714 et seq. regarding petitions to revive abandoned applications.