1904.09(a) Requirements for Transformation
A request for transformation must be filed within three months after the date on which the international registration was cancelled, in whole or in part. Article 9quinquies(i); 15 U.S.C. §1141j(c). The request must include:
- (1) The serial number or registration number of the extension of protection to the United States (i.e., the §66(a) application or registered extension of protection);
- (2) The name and address of the holder of the international registration;
- (3) The goods and/or services to be transformed, if other than all the goods and/or services that have been cancelled;
- (4) The domestic application filing fee required by 37 C.F.R. §2.6(a)(1) for at least one class of goods or services; and
- (5) An e-mail address for receipt of correspondence from the USPTO.
The holder must file the request for transformation directly with the USPTO, and the transformed application will be examined as a domestic application.
Under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and Article 9 quinquies, transformation may take place only if the international registration is cancelled or restricted at the request of the Office of Origin under Article 6(4), 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 or restricted at the request of the holder, or is cancelled or restricted for any other reason.
The USPTO prefers that a request for transformation be filed electronically. In TEAS, the transformation request form can be accessed by clicking on the link entitled "Madrid protocol forms" at http://www.uspto.gov.
Alternatively, the request may be mailed using the First Class Service of the USPS to the following address:
Madrid Processing Unit
600 Dulany Street
37 C.F.R. §§2.190(e) and 7.4(b). It may also be delivered by hand or courier to the Trademark Assistance Center, at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia, Attention: MPU. TAC is open 8:30 a.m. to 5:00 p.m. Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia. 37 C.F.R. §7.4(c). The certificate of mailing or transmission procedures of 37 C.F.R. §2.197 and Priority Mail Express® provisions of 37 C.F.R. §2.198 do not apply to requests for transformation. 37 C.F.R. §§2.197(a)(2)(ii), 7.4(b)(2), and 7.4(e).
Requests for transformation cannot be filed by fax. 37 C.F.R. §§2.195(d)(5) and 7.4(d)(6).