§1141 — Title 15 Commerce and Trade | U.S. Code

Summary

Defines key words used for handling international trademark registrations under the Madrid Protocol. Basic application — the trademark application filed with a Contracting Party’s office that is used as the basis for an international application. Basic registration — the trademark registration that an Office of a Contracting Party grants and that is used as the basis for an international registration. Contracting Party — a country or intergovernmental organization that is a party to the Madrid Protocol. Date of recordal — the date a later request to extend protection is entered on the International Register. Declaration of bona fide intention to use the mark in commerce — a signed statement by the applicant or holder seeking U.S. protection saying they truly intend to use the mark, believe they are entitled to use it, and to their knowledge no one else has the right to use the same or a confusingly similar mark. Extension of protection — the protection that reaches the United States when the holder asks for it under the Madrid Protocol. Holder — the person or legal entity whose name is shown as the owner on the International Register. International application — an application for international registration filed under the Madrid Protocol. International Bureau — the International Bureau of the World Intellectual Property Organization (WIPO). International Register — the official record of international registrations kept by the International Bureau. International registration — a mark registration granted under the Madrid Protocol. International registration date — the date the International Bureau assigns to an international registration. Madrid Protocol — the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid, Spain, on June 27, 1989. Notification of refusal — the notice the United States Patent and Trademark Office sends to the International Bureau saying an extension of protection cannot be granted. Office of a Contracting Party — the office or government entity responsible for registering marks for that Contracting Party, or a common office shared by more than one Party and recognized by the International Bureau. Office of origin — the Office of a Contracting Party where the basic application was filed or the basic registration was granted. Opposition period — the time allowed to file an opposition in the United States Patent and Trademark Office, including any extension under section 1063 of this title.

Title 15, §1141

Commerce and Trade — Source: USLM XML via OLRC

In this subchapter:

(1)The term “basic application” means the application for the registration of a mark that has been filed with an Office of a Contracting Party and that constitutes the basis for an application for the international registration of that mark.

(2)The term “basic registration” means the registration of a mark that has been granted by an Office of a Contracting Party and that constitutes the basis for an application for the international registration of that mark.

(3)The term “Contracting Party” means any country or inter-governmental organization that is a party to the Madrid Protocol.

(4)The term “date of recordal” means the date on which a request for extension of protection, filed after an international registration is granted, is recorded on the International Register.

(5)The term “declaration of bona fide intention to use the mark in commerce” means a declaration that is signed by the applicant for, or holder of, an international registration who is seeking extension of protection of a mark to the United States and that contains a statement that—

(A)the applicant or holder has a bona fide intention to use the mark in commerce;

(B)the person making the declaration believes himself or herself, or the firm, corporation, or association in whose behalf he or she makes the declaration, to be entitled to use the mark in commerce; and

(C)no other person, firm, corporation, or association, to the best of his or her knowledge and belief, has the right to use such mark in commerce either in the identical form of the mark or in such near resemblance to the mark as to be likely, when used on or in connection with the goods of such other person, firm, corporation, or association, to cause confusion, mistake, or deception.

(6)The term “extension of protection” means the protection resulting from an international registration that extends to the United States at the request of the holder of the international registration, in accordance with the Madrid Protocol.

(7)A “holder” of an international registration is the natural or juristic person in whose name the international registration is recorded on the International Register.

(8)The term “international application” means an application for international registration that is filed under the Madrid Protocol.

(9)The term “International Bureau” means the International Bureau of the World Intellectual Property Organization.

(10)The term “International Register” means the official collection of data concerning international registrations maintained by the International Bureau that the Madrid Protocol or its implementing regulations require or permit to be recorded.

(11)The term “international registration” means the registration of a mark granted under the Madrid Protocol.

(12)The term “international registration date” means the date assigned to the international registration by the International Bureau.

(13)The term “Madrid Protocol” means the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid, Spain, on June 27, 1989.

(14)The term “notification of refusal” means the notice sent by the United States Patent and Trademark Office to the International Bureau declaring that an extension of protection cannot be granted.

(15)The term “Office of a Contracting Party” means—

(A)the office, or governmental entity, of a Contracting Party that is responsible for the registration of marks; or

(B)the common office, or governmental entity, of more than 1 Contracting Party that is responsible for the registration of marks and is so recognized by the International Bureau.

(16)The term “office of origin” means the Office of a Contracting Party with which a basic application was filed or by which a basic registration was granted.

(17)The term “opposition period” means the time allowed for filing an opposition in the United States Patent and Trademark Office, including any extension of time granted under section 1063 of this title.

Notes & Related Subsidiaries

Statutory Notes and Related Subsidiaries

Effective Date

Pub. L. 107–273, div. C, title III, § 13403, Nov. 2, 2002, 116 Stat. 1920, provided that: “This subtitle [subtitle D (§§ 13401–13403) of title III of div. C of Pub. L. 107–273, enacting this subchapter and provisions set out as a note under section 1051 of this title] and the

Amendments

made by this subtitle shall take effect on the later of— “(1) the date on which the Madrid Protocol (as defined in section 60 of the Trademark Act of 1946 [this section]) enters into force with respect to the United States [Nov. 2, 2003]; or “(2) the date occurring 1 year after the date of enactment of this Act [Nov. 2, 2002].”

§1141 Definitions