TMEP 1904.09: Transformation to Application Under §1 or §44

October 2017 Edition of the TMEP

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1904.09    Transformation to Application Under §1 or §44

An international registration is dependent on the basic application and/or basic registration for five years after the date of the international registration.  Article 6(3).  If the basic application or registration is restricted, abandoned, cancelled, or expired with respect to some or all of the goods or services listed in the international registration, the Office of Origin will notify the IB, and the IB will cancel, to the extent applicable, the international registration and notify the USPTO of the cancellation.  Article 6(4). See TMEP §1902.09.  Thus, an Article 6(4) cancellation is a cancellation, in whole or in part, of the international registration by the IB at the request of an Office of Origin. Thereafter, the USPTO will cancel in whole, or restrict in part, the corresponding §66(a) registered extension of protection, or abandon, in whole or in part, the corresponding §66(a) application.

In this situation, the holder of the international registration may "transform" the goods and/or services to which the cancellation applies in the corresponding pending or registered §66(a) extension of protection to the United States into an application under §1 or §44 of the Trademark Act for registration of the same mark for any or all of the cancelled, restricted, or abandoned goods/services that were covered by the extension of protection.  The effective filing date of the new §1 or §44 application is the international registration date, the date of recordal of the extension of protection if based on subsequent designation, or the date of priority of the request for extension of protection with the IB, whichever is applicable. 15 U.S.C. §1141j(c); Article 9 quinquies.

A request for transformation must be filed within three months after the date on which the Article 6(4) cancellation was processed by the IB. 15 U.S.C. §1141j(c);  Article 9quinquies(i). The deadline for filing a request for transformation is a statutory requirement. The Director cannot extend, suspend, or waive this statutory requirement for any reason, even for an extraordinary situation. See In re Mother Tucker's Food Experience (Can.) Inc., 925 F.2d 1402, 1405, 17 USPQ2d 1795, 1797-98 (Fed. Cir. 1991); In re Media Cent. IP Corp., 65 USPQ2d 1637, 1639 (Dir USPTO 2002); TMEP §§ 1604.04, 1708.

An extension of protection can be transformed only in the event of an Article 6(4) cancellation of the international registration, that is, at the request of the Office of Origin due to the cancellation of the basic application and/or registration.  It is not available if the international registration expires for failure to renew, is cancelled, in whole or in part, at the request of the holder, or is cancelled, in whole or in part, for any other reason. 15 U.S.C. §1141j(c);  37 C.F.R. §7.31; Article 9 quinquies.  See TMEP §1904.09(a) for the requirements for transformation.