United States Patent and Trademark Office (US)

As Office of a Designated Contracting Party

Request for extension of protection

This Madrid Highlights contains helpful hints and tips when designating the United States of America in an international registration, including the USPTO’s approach to the specification of goods and services, and the use requirement to maintain a grant of protection.


The Office republishes in the USPTO Trademark Official Gazette (OG) notifications of international registrations, subsequent designations or renewals received from the International Bureau. The OG is published weekly and available online at

Examination Procedure

Absolute and relative grounds.

Opposition Procedure

Thirty days commencing on the date of publication in the USPTO Official Gazette (extendable). Relative and absolute grounds.

Time Limit for Responding to Provisional Refusal

Six months from the date of issue of the provisional refusal by the USPTO (not extendable). This is the “mailing date” found on the provisional refusal cover sheet issued by WIPO. Failure to respond in time provided will result in abandonment. If failure to respond was unintentional, may petition to revive.

Administrative and judicial remedies in case of refusal issued by the Office

Appeal may be taken on relative and absolute grounds of refusal to the USPTO’s Trademark Trial and Appeal Board. Final decisions of the Board are appealable to Federal District Court or the Court of Appeals of the Federal Circuit.

Relief from procedural refusals may be made on petition of the Director of the USPTO. Decisions of the Director on petition in ex officio procedural matters are not appealable.

Last updated on: December 6, 2016