U.S. trademark services / Madrid Section 66(a)

Responding to a USPTO Provisional Refusal

A provisional refusal is the USPTO telling WIPO that your client's U.S. extension of protection cannot proceed as filed. It is not a final decision, and it is answerable, but the clock is different from an ordinary U.S. office action, and the difference has cost applicants their filings.

The clock

A foreign-domiciled Section 66(a) applicant must appoint a U.S.-licensed attorney to respond to a provisional refusal.

USPTO source ↗

The response period for a Madrid Section 66(a) office action is generally six months from the USPTO issue date.

USPTO source ↗

The optional three-month response extension available on ordinary Sections 1 and 44 office actions does not apply to Section 66(a) matters.

USPTO source ↗

The last point is the one that catches firms out. A team used to Sections 1 and 44 matters may calendar a three-month extension that does not exist here, and discover it in month six.

What to send

Before conflicts are cleared, send party names only. Once cleared, the record below is what a response is built from.

  • The full WIPO notification and the USPTO office action, as issued
  • The current identification of goods and services, in the wording of record
  • Owner name, entity type, and domicile street address as they appear on the international registration
  • Any related foreign prosecution history bearing on the refusal
  • Any prior U.S. applications or registrations owned by the same applicant
  • The response deadline as you have calendared it, with its time zone

What the refusal usually is

Identification of goods and services
The most common refusal on a Madrid extension. WIPO-acceptable wording is frequently broader than the USPTO accepts, and the fix is a narrowing amendment that must not cut into commercially necessary scope.
Section 2(d) likelihood of confusion
Argued on the DuPont factors, sometimes with a consent or coexistence agreement where the cited owner will engage.
Descriptiveness or geographic significance
Argued on the mark as a whole and the actual goods, occasionally with evidence of acquired distinctiveness.
Ownership, entity, or domicile defects
Usually procedural and inexpensive to correct, but they must be corrected before anything substantive is reached.

Assessment first

Madrid / Section 66(a) refusal assessment is $350, credited if retained. It produces a written read on response options, scope, and timing, so a decision to instruct is made against an assessment rather than an estimate. Substantive responses are quoted in writing after the refusal is read.

Request a conflict check

Send the party names, the mark, the serial or international registration number, and the response deadline with its time zone. Documents come after clearance.