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Archived updates for Wednesday, October 12, 2005

Ninety-Five Percent of Madrid REPs to US Refused

Carl Oppedahl posted the following note to the INTA Listserv regarding Madrid Protocol Requests for Extension of Protection ("REPs") to the United States.
About 19740 REPs to the US have been made to the International Bureau, of
which 15454 have been registered by the International Bureau. The IB
transmits these REPs electronically to the USPTO, and right now 14799 of them
have US serial numbers. It takes about six and a half months for a REP to the US
that has a US serial number to get examined. For example right now the
USPTO is examining REPs that received US serial numbers in about March of 2005.
By far the majority of REPs to the US (about ninety-five percent) receive
international refusals. Of the 14799 REPs to the US that have received US
serial numbers, about 12413 have been examined, and 11776 have received an
international refusal.

What are the causes of refusal? A review of several hundred refusals
identifies the following.In well over half of all international refusals
emanating from the USPTO, at least one ground for refusal is the Madrid
applicant having failed to state, in section 2 of Form MM2, the "legal nature of
the legal entity:" of the applicant or the country "under the law of which the
legal entity is organized:" Although these two fields are merely listed on the
MM2 form as "may be required," for a REP to the US, these fields are very much

In well over three-quarters of international refusals emanating from the
USTO, a chief ground for refusal is indefiniteness in the identification of
goods/services. The applications that avoided such refusals appear in
nearly all cases to have identifications selected directly from the USPTO's
Trademark Acceptable Identification of Goods & Services Manual. Of the 12413
REPs that have been examined, 4208 have been published for opposition, and 1353
have been registered.
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