[Code of Federal Regulations]
[Title 37, Volume 1]
[Revised as of July 1, 2008]
From the U.S. Government Printing Office via GPO Access
[CITE: 37CFR7.21]

[Page 315-316]
 
              TITLE 37--PATENTS, TRADEMARKS, AND COPYRIGHTS
 
  CHAPTER I--UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF 
                                COMMERCE
 
PART 7_RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS--Table of Contents
 
      Subpart C_Subsequent Designation Submitted Through the Office
 
Sec. 7.21  Subsequent designation.


    (a) A subsequent designation may be filed directly with the 
International Bureau, or, if it meets the requirements of paragraph (b) 
of this section, submitted through the Office.
    (b) The Office will grant a date of receipt to a subsequent 
designation that is either filed through TEAS, or typed on the official 
paper form issued by the International Bureau. The subsequent 
designation must contain all of the following:
    (1) The international registration number;
    (2) The serial number of the U.S. application or registration number 
of the U.S. registration that formed the basis of the international 
registration;
    (3) The name and address of the holder of the international 
registration;
    (4) A statement that the holder is entitled to file a subsequent 
designation in the Office, specifying that holder: Is a national of the 
United States; has a domicile in the United States; or has a real and 
effective industrial or commercial establishment in the United States. 
Where a holder's address is not in the United States, the holder must 
provide the address of its U.S. domicile or establishment;
    (5) A list of goods and/or services that is identical to or narrower 
than the list of goods and/or services in the international 
registration;
    (6) A list of the designated Contracting Parties. If the goods and/
or services in the subsequent designation are not the same for each 
designated Contracting Party, the holder must list the goods and/or 
services covered by the subsequent designation that pertain to each 
designated Contracting Party;

[[Page 316]]

    (7) The U.S. transmittal fee required by Sec. 7.6;
    (8) If the subsequent designation is filed through TEAS, the 
subsequent designation fees (see Sec. 7.7); and
    (9) If the subsequent designation is filed through TEAS, an e-mail 
address for receipt of correspondence from the Office.
    (c) If the subsequent designation is accorded a date of receipt, the 
Office will then forward the subsequent designation to the International 
Bureau.
    (d) If the subsequent designation fails to contain all the elements 
set forth in paragraph (b) of this section, the Office will not forward 
the subsequent designation to the International Bureau. The Office will 
notify the holder of the reason(s). If the holder paid the subsequent 
designation fees (see Sec. 7.7) through the Office, the Office will 
refund the subsequent designation fees. The Office will not refund the 
transmittal fee.
    (e) Correspondence to correct any irregularities in a subsequent 
designation must be made directly with the International Bureau.

[68 FR 55769, Sept. 26, 2003, as amended at 69 FR 57186, Sept. 24, 2004]