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Archived updates for Tuesday, September 28, 2004

New U.S. Trademark Mailing Addresses and Madrid Protocol Procedures

Effective October 4, 2004, the United States Patent and Trademark Office (‘‘Office’’) is amending its rules to provide new mailing addresses for trademark-related correspondence submitted on paper.

The Trademark Operation and the Trademark Trial and Appeal Board are moving to a new facility in Alexandria, Virginia. It is expected that this move will commence on or about October 4, 2004, and will be completed on or about November 9, 2004. The Office is therefore amending § 2.190 to provide for new mailing addresses for all paper-filed trademark-related correspondence, except for requests to record documents in the Assignment Services Division and requests for copies of trademark documents. Nonetheless, the Office continues to encourage trademark applicants and registrants to file documents with the Trademark Operation via the Trademark Electronic Application System (‘‘TEAS’’) and to file documents with the Trademark Trial and Appeal Board via the Electronic System for Trademark Trials and Appeals (‘‘ESTTA’’).

The Office is also amending some of the rules that govern the submission of documents pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (‘‘Madrid Protocol’’) in the United States, including
  • Removing the requirement that certain papers be filed through the Trademark Electronic Application System "‘TEAS"), including international applications, subsequent designations, responses to notices of irregularity issued by the International Bureau of the World Intellectual Property Organization (‘‘IB’’), and requests for transformation
  • Limiting the requirement that fees payable to the IB for international applications, subsequent designations, and requests to record changes of ownership in the International Register be paid at the time of submission only if the document is filed through TEAS; and
  • Designating new mailing addresses for trademark-related correspondence and paper-filed international applications, subsequent designations, responses to notices of irregularity, requests to record changes in the International Register, requests for transformation, and petitions to the Director to review an action of the Office’s Madrid Processing Unit (‘‘MPU’’).

Due to unforeseen technical difficulties, the deployment of Madrid-related TEAS forms has been delayed. therefore, these requirements of the rules were temporarily waived in a notice published at 68 FR 74479 (Dec. 24, 2003). The Office is now amending its rules to incorporate these changes.

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