Topic Twelve: The trademark of the Shaolin name

[doc]

Ah, but it's not. It's a new, rebuilt temple on the same site where there used to be the original shaolin temple. As it is, from one way of looking at it, the current henan temple is about the fourth shaolin temple, including the southern ones. And anyway, I said "APART from geographical location", lol.

The Henan temple is the one and only. Some of the buildings go back a few hundred years, the one in the back for example, the Thousand Buddha Pavilion. The other so called "Shaolin temples" in the south, IF they existed, were not the original. I suggest you read my FAQ in the site about "How many Shaolin temples there are". You're wrong to assume that the southern temples existed, or played a role as "being" Shaolin. The Henan temple was it.

I agree with your interpretation of the Shaollin name. Yes, it could get messy. No, lots of these southern based Shaolin schools do not teach what is traditionally taught at the Henan temple. Do they teach somethig that had been taught at Shaolin two hundred years ago? Quite possibly. So, yes, it all gets quite messy. And with Chinese history reported the way it is, I don't think that one would ever know.

[dave]

wooden dummy: ur very close to opening a can of worms thats been discussed over and over - have fun

dave

[doc]

Yes, actually quite extensive discussion about this topic has already taken place in the old discussion forum. Head on over to the archive (use the button on top) and search for the relevant posts. I can't remember where exactly in the old forum this was; there actually might have been multiple threads on this "How many Shaolin temples were there" discussion.

[doc]

Some interesting news articles about the trademark of the Shaolin name...

Two articles from China's leading news daily:

Shaolin brand

Shaolin Temple, known for its legendary martial Buddhist monks, recently handed over 20,900 yuan (US$2,518) in tax for its first income obtained from a Taiwan-based user of the "Shaolin" trade mark.

The popularity of the temple soared following production of the film "Shaolin Temple," which attracted millions of viewers around the world two decades ago.

To protect its intellectual rights, Shaolin Temple set up a company, Henan Shaolin Business Development Co Ltd, and registered the "Shaolin" trademark in almost 100 nations and regions.


Monks battle use of "Shaolin" as trademark
(September 25,2002 )(xinhua)


Shaolin Temple monks, most famous for boxing, are finding themselves caught up in a new kind of fight, one to protect their temple's name.


The outside world is engaging the monks, normally considered to be far removed from worldly activities, in a "war" to prevent the name of the temple in central China's Henan Province from being abused in commercial activities.


Shaolin Temple, built at Songshan Mountain, central China's Henan Province, in 496 during the Northern and Southern dynasties (420-581), is considered the birthplace of the famous Shaolin Boxing, a unique combination of Buddhist and Chinese martial arts.


The militia monks of Shaolin gained fame during the early Tang Dynasty (618-907) by helping Li Shimin, the second emperor of the Tang Dynasty, to suppress a local feudal ruler who wanted to set up a separate government by force.


Shaolin Boxing has been gaining influence worldwide as actors of Chinese origin, such as Bruce Lee and Jackie Chan, use its stunts in a wide range of overseas films.


The current battle involves the registration of "Shaolin" or " Shaolin Temple" as tradmarks all over the world. A random survey conducted by the China Trademark and Patent Affairs Agency in 11 countries and regions on five continents shows that, except for Hong Kong, these areas have been caught up in the craze, registering 117 items with the name.


Take China itself + more than 100 businesses, in sectors including automobiles, furniture, foods, alcoholic beverages and medicine, are churning out commodities bearing the trademark of " Shaolin."


A growing abuse of Shaolin as a trademark in internationalcommercial activities in past years have dragged the monks into awar of self defense.


Henan Shaolin Temple Industrial Development Ltd. Co. has beenset up to take charge of protecting and administrating theintangible assets of Shaolin Temple in a systematic way in a bidto safeguard the legitimate rights of the temple and ban abusiveuse of the temple's name in commercial activities, said ShiYongxin, abbot of Shaolin Temple.


In the meantime, the temple has made efforts to register " Shaolin" and "Shaolin Temple" as trademarks with the GeneralAdministration for Industry and Commerce of China.


By August this year, Shaolin Temple had received certificatesof registration for over 43 items, according to the abbot.


Registration of Shaolin Temple as trademarks overseas has alsobeen stepped up. "It is in the benefit of Shaolin Temple forprotecting trademarks internationally," said Shi Yongxin.


After negotiations, Rainer Deyhle, a German businessman,decided to give 11 trademarks he registered in the European Union(EU) two years ago to Shaolin Temple without charge, and thelatter will cooperate with the German businessman in setting up aShaolin cultural center in Germany, where two monks from thetemple will give lectures all year round.


After more than a year's effort, Shaolin Temple has alsoprocured the rights of prior applications for five registered " Shaolin" trademarks in Australia.


"It is our unshirkable historical responsibilities to protectand rejuvenate the culture of Shaolin," added Shi Yongxin.

[wooden dummy]

lol, Bruce lee and Jackie Chan... usin SHaolin boxing? Yah... O-Kayyy...

[doc]

More trademark stuff

From the US government trademark section. Just to give you an idea as to what Yongxin is doing with Shaolin...

Word Mark registered: Shaolin

Translation: THE TRANSLITERATION OF THE CHINESE CHARACTER IS "SHAOLIN", WHICH IS "THE NAME OF THE TEMPLE WHERE THE ABBOT OF CHINA SONGSHAN SHAOLIN TEMPLE LIVES". (That's interesting, eh?)

Registered by: (APPLICANT) China Songshan Shaolin Temple RELIGIOUS ORGANIZATION CHINA Shaolin Temple Songshan, Dengfeng Henan CHINA, on November 28, 2000

Goods covered:

IC 003. US 001 004 006 050 051 052. G & S: SOAP, NAMELY, DEODORANT SOAP AND DETERGENT SOAP; WASHING PREPARATIONS, NAMELY, DISHWASHING DETERGENTS; PERFUMES; INCENSE; CAKES OF TOILET SOAP; COSMETICS, NAMELY, COSMETIC PENCILS, PRE-MOISTENED COSMETIC TISSUES AND LIPSTICKS; SHOE POLISH; POLISHING WAX, NAMELY, FLOOR POLISHING WAX, AUTO POLISHING WAX; CLEANING PREPARATIONS, NAMELY, HAND CLEANING PREPARATIONS, AUTO CLEANING REPARATIONS AND OVEN CLEANING PREPARATIONS; DENTIFRICES; AND NON-MEDICATED MOUTH WASH (Based on Intent to Use)
IC 005. US 006 018 044 046 051 052. G & S: BALMS FOR MEDICAL PURPOSES, NAMELY, ANALGESIC BALMS AND MEDICATED LIP BALMS; ADHESIVE PLASTER FOR MEDICAL PURPOSES; HERB TEAS FOR MEDICINAL PURPOSES; DIETETIC BEVERAGES FOR MEDICAL USE, NAMELY, DIETARY DRINK MIX FOR USE AS A MEAL REPLACEMENT; FUMIGANTS FOR AGRICULTURAL, DOMESTIC AND COMMERCIAL USES; AIR FRESHENERS; MEDICATED CANDY FOR SORE THROATS; PHARMACEUTICAL PREPARATION FOR TREATMENT OF RESPIRATORY SYSTEM DISEASES, SKIN DISEASES, GYNECOLOGICAL DISEASES, NERVOUS SYSTEM DISEASES, UROGENITAL SYSTEM DISEASES, CARDIOVASCULAR SYSTEM DISEASES AND DISORDERS; GELATIN CAPSULES SOLD EMPTY FOR PHARMACEUTICALS AND MEDICINAL HERBS; HERBAL TEAS FOR MEDICINAL PURPOSES; MEDICINAL TONICS TO CLEANSE THE BODY; AND FOOD FOR MEDICALLY RESTRICTED DIETS (Based on Intent to Use)

IC 006. US 002 012 013 014 023 025 050. G & S: BRONZE WORKS OF ART, NAMELY, STATUES AND SCULPTURES; WORKS OF ART OF COMMON METAL, NAMELY, STATUES, SCULPTURES, AND DOORS OF METAL; COLUMNS OF METAL FOR ADVERTISEMENT PURPOSES, NAMELY, BUDDHIST COLUMN FOR THE ADVERTISEMENT OF MARTIAL ARTS; METAL TELEPHONE BOOTHS; MONUMENTS OF BRONZE FOR TOMBS; BURIAL VAULTS OF METAL; STATUES OF NON-PRECIOUS METAL; METAL KEY RINGS; AND SIGNBOARDS OF METAL. FIRST USE: 19630200. FIRST USE IN COMMERCE: 19930300

IC 008. US 023 028 044. G & S: KNIVES FOR HUNTING, FOLDING, CHEF AND PARING; HAND-OPERATED GARDEN TOOLS, NAMELY, WEEDING FORKS AND HOES; HAND TOOLS, NAMELY, RAMS, AUGERS, SAWS, SWORDS, SABRES, HUNTING KNIVES, AXES, AND STAINLESS STEEL TABLE KNIVES, SIDE ARMS, NOT INCLUDING FIREARMS, NAMELY, HUNTING KNIVES AND SWORDS; TABLEWARE, NAMELY, KNIVES, FORKS AND SPOONS. FIRST USE: 19820100. FIRST USE IN COMMERCE: 19930200

IC 009. US 021 023 026 036 038. G & S: COMPUTERS; VENDING MACHINES; BLANK MAGNETIC SOUND RECORDING STRIPS; SLIDE PROJECTORS; APPARATUS FOR GAMES ADAPTED FOR USE WITH TELEVISION RECEIVERS ONLY, NAMELY, JOYSTICKS FOR VIDEO GAMES; BLANK MAGNETIC COMPUTER TAPES; BLANK VIDEOTAPES AND PRE-RECORDED VIDEOTAPES FEATURING ACTION-ADVENTURE, DOCUMENTARY AND CARTOON; PHOTOGRAPHIC SLIDE TRANSPARENCIES; COMPUTER SOFTWARE FOR DATABASE MANAGEMENT, SPREADSHEET AND WORD PROCESSING; BLANK FLOPPY DISKS FOR COMPUTERS; VIDEO GAME CARTRIDGES; AND SUNGLASSES (Based on Intent to Use)

IC 014. US 002 027 028 050. G & S: JEWELRY, NAMELY, AMULETS, BRACELETS. CHARMS, NECKLACES, HAT ORNAMENTS OF PRECIOUS METAL, RINGS, AND MEDALLIONS; WATCH FOBS; WORKS OF ART, NAMELY, STATUES OF PRECIOUS METAL AND BADGES OF PRECIOUS METAL; SILVER ORNAMENTAL PINS; OBJECTS OF IMITATION GOLD, NAMELY, STATUES, RINGS, ORNAMENTAL PINS; TEA INFUSERS OF PRECIOUS METAL; CLOCKS; WATCHES; AND JEWELRY (Based on Intent to Use)

IC 020. US 002 013 022 025 032 050. G & S: BAMBOO CURTAINS; ARMCHAIRS; CUSHIONS; FURNITURE; STRAW MATTRESSES; PILLOWS; DECORATIVE WALL PLAQUES; FURNITURE NOT OF TEXTILE; WAX FIGURES; BUSTS OF WOOD, WAX, PLASTER OR PLASTIC; FIGURINES AND STATUETTES OF WOOD, WAX, PLASTER OR PLASTIC; FUNERARY URNS AND COFFINS; AND MEMORIAL PLAQUES OF METAL. FIRST USE: 19950200. FIRST USE IN COMMERCE: 19950400

IC 021. US 002 013 023 029 030 033 040 050. G & S: PORCELAIN WARE, NAMELY, PORCELAIN SCULPTURES, PORCELAIN FIGURES, PORCELAIN PLATES; CROCKERY, NAMELY, PLATES, BOWLS, SAUCERS, DRINKING GLASSES, CUPS, TEA POTS NOT OF PRECIOUS METAL; CHINA ORNAMENTS; BUSTS OF CHINA, TERRA-COTTA OR GLASS; WORKS OF ART OF PORCELAIN, TERRA-COTTA OR GLASS, NAMELY, SCULPTURES AND STATUETTES; FIGURINES AND STATUETTES OF PORCELAIN, TERRA-COTTA OR GLASS; CRYSTAL BEVERAGE GLASSWARE; PERFUME BURNERS NOT OF PRECIOUS METAL; TEA SERVICES, NOT OF PRECIOUS METAL; HAIR COMBS; NON-ELECTRIC TOOTHBRUSHES; TEA CADDIES OF PRECIOUS METAL; DRINKING VESSELS OF PRECIOUS METAL; TEA STRAINERS OF PRECIOUS METAL; WIND CHIMES; AND CLEANING CLOTHES. FIRST USE: 19820600. FIRST USE IN COMMERCE: 19920300

IC 030. US 046. G & S: TEA; FONDANTS, NAMELY, CONFECTIONERY CHIPS FOR BAKING, FROZEN CONFECTION; BISCUITS; SWEETMEATS, CANDY; CHEWING GUM, NOT FOR MEDICAL PURPOSES; COFFEE-BASED BEVERAGES CONTAINING MILK; COCOA FOOD BEVERAGES NOT BEING DAIRY-BASED OR VEGETABLE-BASED; CHOCOLATE-BASED BEVERAGES CONTAINING MILK; CUSTARD-BASED FILLING FOR CAKES AND PIES; PASTRIES; CORN MEAL; PUDDINGS; NOODLES; POPPED POP CORN; HONEY; AND DIETETIC SUBSTANCES, NOT FOR MEDICAL PURPOSES, NAMELY, CEREAL-BASED SNACK FOOD (Based on Intent to Use)

IC 035. US 100 101 102. G & S: DIRECT MAIL ADVERTISING; ADVERTISING AGENCIES; ARRANGING AND CONDUCTING TRADE SHOW EXHIBITS IN THE FIELDS OF AUTOMOBILES, ARTS AND CRAFTS; IMPORT-EXPORT AGENCIES; BUSINESS MANAGEMENT OF PERFORMING ARTISTS; COMPUTERIZED DATABASE MANAGEMENT; ACCOUNTING; ADVERTISING AGENCIES, NAMELY, PROMOTING TRADING SERVICES THROUGH THE DISTRIBUTION OF PRINTED AND AUDIO PROMOTIONAL MATERIALS AND BY RENDERING SALES PROMOTION ADVICE; AND COMMERCIAL OR INDUSTRIAL MANAGEMENT ASSISTANCE (Based on Intent to Use)

IC 036. US 100 101 102. G & S: ISSUING STORED VALUE CARDS; APPRAISALS OF ANTIQUES; REAL ESTATE MANAGEMENT; BROKERAGE; CHARITABLE FUND RAISING; ART APPRAISAL; JEWELRY APPRAISAL; NUMISMATIC APPRAISAL; REAL ESTATE APPRAISAL; STAMP APPRAISAL; AND PAWN BROKERAGE (Based on Intent to Use)



Interesting. They've got everything but my grandmother's panties covered by this.

[doc]

Oh, and they added this trademark of Shaolin to cover the following goods....

IC 010. US 026 039 044. G & S: Surgical apparatus and instruments, namely, needles for medical purposes, surgical cutlery, anaesthetic delivery apparatus, syringes for medical purposes; thermometers for medical purposes; testing apparatus for medical purposes, namely, anaesthetic apparatus used by the Buddhist monk doctors; cupping glasses for medical purposes, namely, the glasses for traditional Chinese medicine cupping treatment used by the Buddhist monk doctors; electric vibromassage apparatus and electric esthetic massage apparatus; gloves for massage; feeding bottles; soporific pillows for insomnia; orthopedic articles, namely, orthopedic braces, orthopedic belts and orthopedic joint implants; acupuncture needles; and sutures
IC 018. US 001 002 003 022 041. G & S: Canes; walking sticks; school bags; satchels, umbrellas; travelling bags; haversacks; purses; and fur pelts

IC 038. US 100 101 104. G & S: television broadcasting; cable television broadcasting; rental of telephones; electronic mail; paging services via radio, telephone and other means of electronic communication; and cellular telephone communication

IC 042. US 100 101. G & S: Medical clinics; massage; personal body guarding; organization of religious meetings; canteens; cafes; cafeterias; self-service restaurants; snack-bars; and hotels


Electric vibromassage apparatus.

Hmmm.

[daodejing]

God, all this to sell goods. I wonder how successful the abuse of the term shaolin would be in other countries if they simply bothered to translate the term. Somehow "Little Forest Wahnham Institute" just doesnt seem to have the same commercial draw.

As for the who traditional vs. non-traditional dillemma, I say, forget about it. It will resolve itself. Gongfu is an evolving thing. Always has been, always will be. Forms do not stay the same when taught through different people over the millenia. It's silly to think they would. The problem with wushu is not that it's not traditional, the problem with wushu as a martial art is that the pracititioners never seem to develop jing in there training. I forget the derogatory chinese word for wushu is something along the lines of "flower fist" because speed and control are cultivated, but not power and essence. This is why bad things happen to a wushu champion when you put them in a ring with a UFC fighter, or even a regular boxer. To be perfectly honest wushu isn't the only form of martial art with this problem. But now I'm straying from my topic.

The point is, ignore names. There is distinction but no meaning in words. Understand that and you can see through the many poor teachers out there who are more interested in you as a source of income than they are in helping you cultivate your jing, qi, and shen. I would like to think that a real monk would belong to the latter category.

So in the end, dispite the fact that the ignorant masses are swayed by words that sound pretty to them, what is in a name? Would a rose by any other name not smell so sweet?

But in all seriousness, the name is being abused for commercial success, so let Yongxin do what he needs to do. Things will work out. It's not worth arguing about.

[doc]

No, it's not worth arguing about. But, in the (near?) future, when the lawsuits start flying to "control" the name "Shaolin", it's going to be a nightmare. The fact that they are trying to cover all bases with respect to goods and services, just leads me to believe that this is a pre-emptive move.

Yongxin is planning something. And I believe it's going to be nasty.

[doc]

More on trademarks...

Dear doc,

Are the words: "Shaolin", Shaolin Wushu", Shaolin Monastery" registered as trademarks in the PRC?

xxxx

Well, they are here in the US. So, I'd bet they are in China. And in fact, because they're registered here in the US, at least the word "Shaolin" is, Yongxin is covered "worldwide", by at least the countries that have signed the Madrid Protocol.

Your guess is as good as mine with regards to what he'll do with this. I can only imagine. But, in my mind, the word "Shaolin" seems to be more of a common word, not truly belonging to anyone in particular. The term "Shaolin Temple", belongs, of course, to the temple proper. Think "Catholic" versus "Catholic Church". Similar vein. I'm actually kind of surprised he got the 'Shaolin" trademark.

But, read on. Look for my NB. (Note Bene); I've tried to highlight the important stuff (direct from the US Government Patent and Trademark Office):



What is a trademark or service mark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a certain entity or person. The trademark is protected for a period of 20 years, indefinitely renewable. It is not necessary to register a trademark or service mark to prevent others from infringing on the trademark. Trademarks generally become protected as soon as they are adopted by an organization and used in commerce, even before registration. Registering means simply recording the trademark with United States Patent and Trademark office. As a result, you get the ® symbol on your trademark.

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.


Is registration of my mark required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
constructive notice to the public of the registrant's claim of ownership of the mark;
a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
the ability to bring an action concerning the mark in federal court;
the use of the U.S registration as a basis to obtain registration in foreign countries; and
the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.


[b]When can I use the trademark symbols TM, SM and ®?[b]

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.


BASIS FOR FILING

The application should include your "basis" for filing. Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future.

What is "use in commerce"?

NB: For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.

If you have already started using the mark in commerce, you may file based on that use. A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

What is "intent to use"?

If you have not yet used the mark, but plan to do so in the future, you may file based on a good faith or bona fide intention to use the mark in commerce. You do not have to use the mark before you file your application.


An "intent to use" application must include a sworn statement (usually in the form of a declaration) that you have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement.

NOTE: If you file based on intent to use, you must begin actual use of the mark in commerce before the USPTO will register the mark; that is, after filing an application based on "intent to use," you must later file another form ("Allegation of Use") to establish that use has begun. See "Additional Requirements for ‘Intent to Use’ Applications" for more information.

Is there any other possible filing basis?

Yes. Although not as common, you may base your application on international agreements. Under certain international agreements, if you qualify, you may file in the U.S. based on a foreign application or on a registration in your country of origin.


Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”).

NB: This sets forth the procedures for implementation of the Madrid Protocol Implementation Act of 2002, Pub. L. 107-273, 116 Stat. 1758, 1913-1921 (“MPIA”). The MPIA is effective November 2, 2003. The MPIA provides that: (1) the owner of a U.S. application or registration may seek protection of its mark in any of the countries party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) by submitting a single international application to the International Bureau of the World Intellectual Property Organization (“IB”) through the United States Patent and Trademark Office (“USPTO”); and (2) the owner of an application or registration in a country party to the Madrid Protocol may obtain an international registration from the IB and request an extension of protection of the international registration to the United States.

I. OVERVIEW OF THE MADRID SYSTEM
The Madrid system of international registration is governed by two treaties: the Madrid Agreement Concerning the International Registration of Marks, which dates from 1891, and the Protocol Relating to the Madrid Agreement, which became effective December 1, 1995. The United States is party only to the Protocol, not to the Agreement.

The Madrid system is administered by the IB. To apply for an international registration under the Protocol, an applicant must be a national of, be domiciled in, or have a real and effective business or commercial establishment in one of the countries or intergovernmental organizations that are members of the Protocol (“Contracting Parties”). The application must be based on a trademark application filed in or registration issued by the trademark office of one of the Contracting Parties (“basic application” or “basic registration”). The international application must be for the same mark and include a list of goods/services that is identical to or narrower than the list of goods/services in the basic application or registration. The international application must designate one or more Contracting Parties in which an extension of protection of the international registration is sought.

The applicant must submit the international application through the trademark office of the Contracting Party in which the basic application or registration is held (“Office of Origin”). The Office of Origin must certify that the information in the international application corresponds with the information in the basic application or registration. If the IB does not receive the international application within 2 months of the date it was received by the Office of Origin, the date of the international registration will be the date the international application was received by the IB.

The international registration is dependent on the basic application or registration for five years. If the basic application or registration is abandoned, cancelled or expired, in whole or in part, during this five-year period, the IB will cancel the international registration. See section II.I below for further information.

The holder of an international registration may request protection in additional Contracting Parties by submitting a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of the registration to additional Contracting Parties.

Each Contracting Party designated in an international application or in a subsequent designation will examine the request for extension of protection as a national application under its laws. Under Article 5 of the Protocol and Common Regs. 16 and 17, there are strict time limits (a maximum of 18 months) for the trademark office of a Contracting Party to enter a refusal of an extension of protection. If the Contracting Party does not notify the IB of a refusal within this time period, the mark is automatically protected. However, the extension of protection may be invalidated in accordance with the same procedures for invalidating a national registration, e.g., by cancellation.

The Madrid Protocol may apply to the USPTO in three ways:

Office of Origin. The USPTO is the Office of Origin if an international application or registration is based on an application pending in or a registration issued by the USPTO. See Section II below.
Office of a Designated Contracting Party. The USPTO is the Office of a Designated Contracting Party if the holder of an international registration requests an extension of protection of that registration to the United States. See Section IV below.
Office of the Contracting Party of the Holder. If the holder of an international registration is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States, the holder can file certain requests with the IB through the USPTO, such as requests to record changes of ownership (see section VI.A.1 below) and restrictions on the holder’s right to dispose of an international registration (see section VI.A.2 below). The expression “Contracting Party of the Holder” includes the “Office of Origin.” Common Reg. 1(xxvibis).
II. INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES
This section covers international applications and registrations originating from the United States, i.e., international registrations based on an application pending in the USPTO or a registration issued by the USPTO. See Section IV below for information about requests for extension of protection to the United States by the holder of an international registration originating from another country. International applications originating from the United States will be processed by the USPTO’s new Madrid Processing Unit (“MPU”).

A. Who Can File
NB: Under Section 61 of the Trademark Act and Article 2(1) of the Protocol, a qualified owner of an application pending in the USPTO or a qualified owner of a registration granted by the USPTO may file an application for international registration through the USPTO. To qualify, the international applicant must:

(1) Be a national of the United States;

(2) Be domiciled in the United States; or

NB: (3) Have a real and effective industrial or commercial establishment in the United States.

If joint applicants file, each applicant must meet these requirements. Common Reg. 8(2).

B. Minimum Requirements for Date of Receipt of International Application in USPTO
The minimum requirements for a date of receipt of an international application in the USPTO are set forth in 37 C.F.R. §7.11.

1. International Application Must be Filed Through TEAS
An international application must be filed through the Trademark Electronic Application System (“TEAS”). 37 C.F.R. §7.11(a).

TEAS will require the applicant to select between two different forms, a prepopulated form or a free-text form. The applicant can use the prepopulated form if: (1) the international application is based on a single basic application or registration; (2) the data from the basic application or registration has been entered into the Trademark Applications and Registrations Retrieval (“TARR”) database; and (3) applicant’s changes to the international application are limited to:

Narrowing the list of goods or services;
Changing the classification; and/or
Changing the applicant’s address.
For all other international applications, the applicant must fill in all the fields in the free-text form.

If the international application is based on a newly filed application, the applicant can check TARR at http://tarr.uspto.gov/ to determine whether the basic application data has been entered. If it has not yet been entered, the applicant must use the free-text form.

The prepopulated form will automatically display the exact information that is in the USPTO database for one specific U.S. serial number or registration number. If the applicant does not make any changes to this data, the international application will be certified and forwarded directly to the IB without MPU review of the data.

Certain data fields on the prepopulated form can be changed (e.g., narrowing the scope of the identification of goods and/or recitation of services in the U.S. application or registration); however, if the applicant changes any data on the prepopulated form, an MPU paralegal must review the international application before it can be certified and sent to the IB.

If the applicant uses the free-text form, an MPU paralegal must review the application before it can be certified.

2. Basic Application or Registration Number
The international application must include the filing date and serial number of the basic application, or the registration date and registration number of the basic registration. 37 C.F.R. §7.11(a)(1).

3. Name and Address of Applicant
An international application must include the name and current address of the applicant. The name of the applicant must be identical to the name of the applicant/registrant in the basic application or registration. 37 C.F.R. §7.11(a)(2). If the international applicant is not the record owner of the basic application or registration, the applicant must record the assignment (or other document transferring title) with the Assignment Services Division of the USPTO prior to filing the international application.

On the prepopulated form, the applicant’s name cannot be changed, so the international applicant’s name will always be identical to the name of the owner of the basic application or registration.

When the applicant submits a free-text form, an MPU paralegal will check the TRAM (Trademark Reporting and Monitoring) System to verify that the name of the owner of the basic application or registration is identical to the name of the international applicant. If the names are identical and all other requirements have been met, the MPU paralegal will certify and forward the international application to the IB.

If the names are not identical, the MPU Paralegal will check the Assignment Database to determine whether an assignment or other document affecting title that is not reflected in TRAM has been recorded in the Assignment Services Division. If Assignment records do not show a clear chain of title to the international applicant, the USPTO will notify the applicant that the application cannot be certified. If Assignment records do show a clear chain of title, the MPU Paralegal will update the ownership field in TRAM.

Because a delay in certifying and forwarding an international application to the IB may affect the date of the international registration, any request to record a change in ownership of a U.S. basic application or registration should be filed well in advance of the filing of the international application to allow sufficient processing time. The USPTO strongly recommends use of the Electronic Trademark Assignment System (ETAS), at http://etas.uspto.gov. Assignments filed electronically are recorded much more quickly than assignments filed by mail. If there is an unrecorded change in ownership, and the international applicant does not use ETAS to record the change, it is unlikely that the USPTO will be able to certify or forward the international application to the IB within two months after the application was received in the USPTO. In this situation, the date of the international registration will be the date of receipt of the application in the IB.

Recording a document with the Assignment Services Division may not change the record of ownership in TRAM and TARR, the databases maintained by the Trademark Operation. For certain documents recorded on or after November 2, 2003, the USPTO will automatically update TRAM and TARR, even if the new owner does not file a request to change the ownership information in the trademark databases. See Exam Guide No. 1-03, section V. For documents recorded before November 2, 2003, and documents recorded on or after November 2, 2003, that do not meet the criteria set forth in Exam Guide No. 1-03, the new owner must notify the Trademark Operation in writing that ownership has changed, and request that the ownership field in the trademark databases be updated. 37 C.F.R. §3.85.

If an owner of a U.S. basic application or registration has filed a request to record a change of ownership, the owner should check the TARR database at http://tarr.uspto.gov/, to determine whether the ownership information in the Trademark databases has been updated before submitting an international application. TARR contains the same information as TRAM. If a change of ownership that has been recorded with the Assignment Services Division is not reflected in TRAM and TARR, the new owner should file a written request that the Trademark Operation update its databases with the new owner information.

4. Reproduction (Drawing) of Mark
An international application must include a reproduction of the mark that (1) is the same as the mark in the basic application or registration; and (2) meets the requirements of 37 C.F.R. §2.52. 37 C.F.R. §7.11(a)(3). If the applicant uses the prepopulated form, TEAS will prepopulate the international application with the reproduction from the basic application or registration, or create a reproduction of the word mark.

Standard Character Reproductions. If an applicant wants to claim standard characters, the applicant should check the appropriate box in TEAS. In the free-text form, applicant must type the mark in the appropriate field or attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c). 37 C.F.R. §2.53(a). The USPTO’s standard character chart will be posted on the USPTO website and linked to TEAS forms.

Special Form Reproductions. If the mark is in special form, the reproduction must be a digitized image of the mark that is in .jpg format and scanned at no less than 300 dots per inch and no more than 350 dots per inch, with a length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels. All lines must be clean, sharp and solid, not fine or crowded, and produce a high quality image when copied. 37 C.F.R. §§2.52(c) and 2.53(c). TEAS will generate a digitized image using the reproduction in the basic application or registration. If the quality of the image generated by TEAS is poor, the applicant may attach a higher quality digitized image.

Use of Color. If the mark in the basic application or registration is depicted in black and white and does not include a color claim, the reproduction of the mark in the international application must be black and white. If the mark in the basic application or registration is in color, the reproduction of the mark in the international application must be in color. If the mark in the basic application or registration is depicted in black and white and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark. 37 C.F.R. §7.11(a)(3).

The USPTO will begin accepting color reproductions on November 2, 2003. For applications filed on or after this date, the USPTO will no longer accept black and white reproductions with a color claim, or reproductions that show color by the use of lining. 37 C.F.R. §2.52(b)(1). See Exam Guide No. 1-03, section I.B.1.

As noted above, if the mark is depicted in black and white in the basic application or registration and includes a color claim, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark that meet the requirements of Trademark Rule 2.52. 37 C.F.R. §7.11(a)(3); Common Reg. 9(4)(a)(vii). For example, if the basic application or registration included a color claim and depicted the color on the reproduction by the use of color lining or by a statement describing the color, the applicant must include both a color reproduction of the mark and a black and white reproduction of the mark. If the applicant uses the prepopulated TEAS form, TEAS will prepopulate the international application with a black and white reproduction that is identical to the mark in the basic application or registration, and the applicant must attach a color reproduction that meets the requirements of Trademark Rules 2.52 and 2.53 for reproductions filed through TEAS. 37 C.F.R. §§2.52(c) and 7.11(a)(3).

5. Color Claim
If color is claimed as a feature of the mark in the basic application and/or registration, the international application must include a statement that color is claimed as a feature of the mark and set forth the same name(s) of the color(s) claimed in the basic application and/or registration. 37 C.F.R. §7.12(a).

If the basic application or registration includes a description of the mark indicating that color is used on the mark, or a reproduction that is lined for color, the USPTO will presume that color is a feature of the mark, unless the basic application or registration includes a statement that “no claim is made to color” or “color is not a feature of the mark.” TMEP §807.09(d). For applications filed on or after November 2, 2003, if the drawing shows color, the applicant must include a claim that color is a feature of the mark. 37 C.F.R. §2.52(b)(1).

If color is not claimed as a feature of the mark in the basic application and/or registration, the applicant may not claim color as a feature of the mark in the international application. 37 C.F.R. §7.12(b).

6. Identification of Goods/Services
NB: An international application must include a list of goods/services that is identical to or narrower than the goods/services in the basic application or registration. 37 C.F.R. §7.11(a)(7).

The prepopulated form will include the list of goods/services in the basic application or registration. The applicant may edit the list of goods/services by either deleting particular goods/services or revising the wording of the identification. In the free-text form, the applicant must enter the goods/services manually, and may omit goods or services, or revise the wording of the identification.

7. Classification in International Applications
The goods/services must be classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”). 37 C.F.R. §7.11(a)(7). Failure to properly classify goods or services in an international application according to the international classification system will result in an IB notice of irregularity. Because the final decision on the classification of the goods/services in an international application rests with the IB, the USPTO will not reclassify or give advice as to the reclassification of goods/services. The IB provides guidance on its website at http://www.wipo.int/classifications/en/.

If the goods or services in the basic application or registration are classified in Classes A, B or 200 (which are not part of the international classification system) or are classified in other classes under the old U.S. classification system, it is advisable to reclassify the goods/services into international classes in the international application. Amendment of the corresponding basic U.S. application or registration is not permitted in this situation. In addition, if the identification of goods in the basic application or registration comprises kits or gift baskets, it is advisable for the international applicant to either narrow the identification in order to classify the goods in a single International Class, or pay additional fees for additional International Classes.

The MPU does not certify classification of the goods/services in the international application. Therefore, the owner of the United States application or registration does not have to classify the goods/services in the international application in the same class(es) in which they are classified in the United States basic application or registration. Both the prepopulated form and the free-text form will allow an applicant to change the classification of goods/services in an international application.

In the situations discussed below, it is advisable for the international applicant to reclassify the goods in the international application, in order to avoid a notice of irregularity from the IB.

U.S. Classes A, B & 200

Classes A, B & 200 are classes from the old U.S. classification system that are still used in the United States to classify certification marks for goods (Class A), certification marks for services (Class B) and collective membership marks (Class 200). These classes are not included in the International Classes under the Nice Agreement. Therefore, an international application based on a U.S. application or registration in U.S. Classes A, B or 200 should be reclassified. If the applicant does not reclassify its goods or services into the proper International Class, the IB will issue a notice of irregularity.

U.S. Classes A & B

It has been the longstanding practice in the United States to accept identifications of goods or services for these classes that are broader than those that would be accepted in applications for goods/services in other classes. TMEP §1306.06(f). In many situations, it will be difficult to reclassify these broad identifications into appropriate International Classes. For example, a goods certification mark in U.S. Class A for “remanufactured, refurbished and reconditioned electrical equipment” could include goods in International Classes 7, 9 and/or 11, and possibly others. In a situation like this, the U.S. applicant should specify the type of electrical equipment that is being certified, and either apply in and pay the fees for all appropriate classes, or limit the specification of “electric equipment” to cover goods in one class only.

In some certification mark applications/registrations, the goods/services will be easily classified in one class of the International Classification system. For example, a services certification mark for “testing laboratory and calibration laboratory accreditation services” would be classified in International Class 42. However, it is important to be aware that multiple classes may be required when reclassifying goods/services in U.S. Classes A and B.

U.S. Class 200

Class 200 presents a similar problem and a similar solution. A broad identification of the subject organization in a collective membership mark application or registration is difficult to reclassify. For example, the wording “indicating membership in a conservative youth organization” is too broad and vague for classification in an International Class. On the other hand, “indicating membership in an organization of consulting communications engineers” is easily classified in International Class 42. As with the certification marks, an applicant may have to clarify, specify, or narrow the description of the organization in the international application in order to classify the organization in an International Class.

Kits, Gift Baskets

The USPTO policy regarding the identification and classification of kits and gift baskets differs from the policy of the IB regarding the classification of these goods.

The USPTO permits registration of a kit or gift basket in a single International Class, even if the identification of goods lists items that are classified in other classes. The IB and most foreign countries will not accept an identification of goods in a particular class that includes a reference to goods that are classified in other classes. If an international application includes kits and gift baskets, and the identification of goods refers to items classified in more than one class, the IB is likely to issue a notice of irregularity requiring the applicant to separate out the goods into appropriate classes and pay any additional fees for added classes. To avoid a notice of irregularity, an international applicant may wish to either narrow the identification to refer only to items in a single International Class, or submit additional fees for multiple International Classes.

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IV. REQUEST FOR EXTENSION OF PROTECTION OF INTERNATIONAL REGISTRATION TO THE UNITED STATES
A. Filing Request for Extension of Protection to United States
The holder of an international registration may file a request for extension of protection to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f. The request for extension of protection to the United States may be included in the international application, or in a subsequent designation made after the IB registers the mark. The IB will transmit the request for extension of protection to the United States to the USPTO electronically. The USPTO will refer to a request for extension of protection to the United States as a “§66(a) application.” 37 C.F.R. §7.25(b).

1. Section 66(a) Basis
Section 66(a) of the Trademark Act provides a new basis for filing in the United States. See 37 C.F.R. §2.34(a)(5). A §66(a) applicant cannot change the basis or claim more than one basis. 37 C.F.R. §§2.34(b)(3) and 2.35(a).

2. Filing Date
If a request for extension of protection of an international registration to the United States is made in an international application, the filing date of the §66(a) application is the international registration date. If a request for extension of protection to the United States is made in a subsequent designation, the filing date of the §66(a) application is the date that the subsequent designation was recorded by the IB. 37 C.F.R. §7.26.

3. Declaration of Intent to Use Required
NB: A request for extension of protection to the United States must include a declaration that the applicant has a bona fide intention to use the mark in commerce that can be controlled by the United States Congress. Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a). The declaration must include a statement that the person making the declaration believes applicant to be entitled to use the mark in commerce; and that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive. Section 60(5) of the Trademark Act, 15 U.S.C. §1141(5). The declaration must be signed by (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney as defined in 37 C.F.R. §10.1 who is authorized to practice before the USPTO who has an actual written or verbal power of attorney or an implied power of attorney from the applicant. 37 C.F.R. §2.33(a). The USPTO has provided the IB with wording for the declaration of the applicant’s bona fide intention to use the mark in commerce, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection. Instructions as to who is a proper party to sign the declaration pursuant to 37 C.F.R. §2.33(a) have also been provided to the IB.

The verified statement is part of the international registration on file at the IB. 37 C.F.R. §2.33(e). The examining attorney does not have to review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of the application.

4. Use Not Required
Use in commerce prior to registration is not required. Section 68(a)(3) of the Trademark Act, 15 U.S.C. §1141h(a)(3). Under §71 of the Trademark Act, 15 U.S.C. §1141k, periodic affidavits of use or excusable nonuse are required to maintain a registered extension of protection. See section IV.K below.

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8. Jurisdiction
The provisions with respect to requesting jurisdiction over published §66(a) applications are similar to those for applications under §§1(a) and 44 of the Trademark Act. 37 C.F.R. §2.84. However, when deciding whether to grant requests for jurisdiction of §66(a) applications, the Director must consider the time limits for notifying the IB of a refusal of a §66(a) application, set forth in Article 5(2) of the Madrid Protocol and §68(c) of the Trademark Act.

C. Notice of Refusal
1. Notice Must be Sent Within 18 Months
Within 18 months of the date the IB forwards a request for extension of protection, the USPTO must transmit:

(1) A notification of refusal based on examination;

(2) A notification of refusal based on the filing of an opposition; or

(3) A notification of the possibility that an opposition may be filed after expiration of the 18 month period. If the USPTO notifies the IB of the possibility of opposition, it must send the notification of refusal within 7 months after the beginning of the opposition period or within one month after the end of opposition period, whichever is earlier.

Section 68(c) of the Trademark Act, 15 U.S.C. §1141h(c); Article 5 of the Protocol.

If the USPTO does not send a notification of refusal of the request for extension of protection to the IB within 18 months, the request for extension of protection cannot be refused. Section 68(c)(4) of the Trademark Act; Article 5(5); Madrid Reg. 17(2)(iv); Guide to International Registration Paras B.III.44.06 and B.III.45.03 (2002). If the USPTO sends a notification of refusal, no grounds of refusal other than those set forth in the notice can be raised more than 18 months after the filing date of the request for extension of protection. Section 68(c)(3) of the Trademark Act.

2. Requirements for Notice of Refusal
A final decision is not necessary; a provisional refusal is sufficient to meet the 18 month requirement. Under Common Reg. 17, a notice of provisional refusal must be dated and signed by the USPTO and must contain:

The number of the international registration, preferably accompanied by an indication of the mark;
All grounds of refusal;
If there is a conflicting mark, the filing date, number, priority date (if any), the registration date and number (if available), the name and address of the owner, reproduction of the conflicting mark, and list of goods/services;
A statement that the provisional refusal affects all the goods and services, or a list of the goods/services affected;
The procedures and time limit for contesting the refusal, i.e., period for response or appeal of the refusal, and the authority with which an appeal can be filed;
If the refusal is based on an opposition, the name and address of the opposer.
Where refusal is based on examination, the notice should state that there is a possibility that the mark will later be opposed.

The IB will record the provisional refusal in the International Register and transmit it to the holder of the registration. Article 5(3); Common Reg. 17(4).

If the USPTO’s notification of refusal is deficient, the IB will notify both the holder and the USPTO of the irregularity. Common Reg. 18.

3. What Happens After Notification of Refusal
The holder of an international registration who applies for an extension of protection to the United States will receive the notification of refusal through the IB. The holder must respond directly to the USPTO. Standard examination procedures are used to examine §66(a) applications.

4. Refusal Pertaining to Less Than All the Goods/Services
Where a notification of refusal in a §66(a) application does not pertain to all the goods/services, the mark is protected for the remaining goods/services, even if the holder does not respond to the notification of refusal. Sections 68(c) and 69(a) of the Trademark Act, 15 U.S.C. §§1141h(c) and 1141141h(c) and 1141i(a), provide that an application under §66(a) of the Trademark Act is automatically protected with respect to any goods or services for which the USPTO has not timely notified the IB of a refusal.

Accordingly, 37 C.F.R. §2.65(a) provides that if a refusal or requirement is expressly limited to only certain goods/services and the applicant fails to file a response or a complete response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services. See Exam Guide No. 1-03, section III for further information about partial abandonment.

5. Confirmation or Withdrawal of Provisional Refusal
If the USPTO has sent a notice of provisional refusal, once procedures regarding the refusal are complete, the USPTO must notify the IB that (1) protection is refused for all goods/services; or (2) the mark is protected for all goods/services; or (3) the mark is protected for some specified goods/services. Common Reg. 17(5). The IB will record this and send it to the holder.

D. Opposition
Section 68(a)(2) of the Trademark Act, 15 U.S.C. §1141h(a)(2), provides that a request for extension of protection is subject to opposition under §13 of the Trademark Act. As noted above, the USPTO must notify the IB within 18 months of the filing date of the request for extension of protection of: (1) a notification of refusal based on the filing of an opposition; or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period.

The notice must state the dates on which the opposition period begins and ends, if known. If the dates are unknown, the USPTO must communicate them to the IB “at the latest at the same time as any notification of a provisional refusal based on an opposition.” Common Reg. 16(1)(b).

Any notification of refusal on the basis of opposition must be received by the IB within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier. Section 68(c)(2) of the Trademark Act, 15 U.S.C. §11411h(c)(2); Article 5(2)(c)(ii).

An opposition to a §66(a) application must be filed through the Electronic System for Trademark Trials and Appeals (“ESTTA”). 37 C.F.R. §2.101(b)(2). The notice of opposition must include all fees for each party opposer to oppose the registration in all classes specified in the opposition. 37 C.F.R. §2.101(d)(2). Once filed, an opposition to a §66(a) application may not be amended to change or add to the grounds for opposition or to add to the goods or services opposed. 37 C.F.R. §2.107(b).

Request for Extension of Time to Oppose. A request for extension of time to oppose a §66(a) application must be filed through ESTTA. 37 C.F.R. §2.102(a)(2).

No more than three requests to extend the time for filing an opposition may be filed. The time for filing an opposition may not be extended beyond 180 days from the date of publication. 37 C.F.R. §2.102(c). This also applies to §1 and §44 applications.

E. Certificate of Extension of Protection
If the mark in a §66(a) application is published for opposition and is not opposed, or if the application survives all oppositions filed, the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Official Gazette. Section 69(a) of the Trademark Act, 15 U.S.C. §1141i(a). From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register. Section 69(b) of the Trademark Act. The certificate of registration will look the same as the certificate issued for registrations resulting from applications based on §§1 and 44 of the Trademark Act.

Upon registration, the USPTO will refer to an extension of protection to the United States as a “registration,” “registered extension of protection,” or a “§66(a) registration.” 37 C.F.R. §7.25(c).

A registered extension of protection always remains part of the international registration. In this respect, a registered extension of protection differs from a §44 registration. Section 44 registrations exist independent of the underlying foreign registration. 15 U.S.C. §1126(f).

F. Assignment of Extension of Protection to the United States
Under §72 of the Trademark Act, 15 U.S.C. §1141l, an extension of protection to the United States may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fide and effective industrial or commercial establishment in a country that is party to the Madrid Protocol (or in a country that is a member of an intergovernmental organization that is a party to the Madrid Protocol).

Because the extension of protection remains part of the international registration, assignments of extensions of protection to the United States must be recorded at the IB. The IB will notify the USPTO of any changes in ownership recorded in the International Register. The USPTO will record only those assignments (or other documents of title) that have been recorded in the International Register, and will automatically update TRAM and TARR to reflect these changes. Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration or an extension of protection to the United States. 37 C.F.R. §7.22.

See section VI.A.1 below regarding requests to record a change of ownership in the International Register.

G. Invalidation of Protection in United States
A registered extension of protection to the United States may be invalidated in an administrative or judicial proceeding, governed by U.S. law, such as a cancellation proceeding before the Trademark Trial and Appeal Board or a federal court proceeding. The USPTO must notify the IB if an extension of protection to the United States is invalidated. Article 5(6) of the Protocol. The requirements for a notice of invalidation are set forth in Common Reg. 19.

H. Cancellation of International Registration By IB
If the IB notifies the USPTO that the international registration has been cancelled with respect to some or all of the goods/services, the USPTO will cancel the extension of protection with respect to such goods/services as of the date that the IB cancelled the international registration. Section 70(a) of the Trademark Act, 15 U.S.C. §1141j; 37 C.F.R. §7.30.

An international registration is dependent on the basic application and/or basic registration for 5 years after the date of the international registration. Article 6(3) of the Protocol. If the basic application or registration is restricted, abandoned, cancelled, or expired, with respect to some or all of the goods and services listed in the international registration, the Office of Origin will notify the IB, and the IB will cancel (or restrict) the international registration. Article 6(4) of the Protocol. See section II.I above.

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[SongshanMonk]

Geez doc, I hadn't done that much reading since the police academy. At any rate, Yes Yongxin is planning something very big......nasty unknown yet. When it all goes into effect there is going to be countless number of legal cases when he cracks the whip. Good in some ways because we know some are abusing the shaolin name and bad in some ways because we don't know exactly what the effects are going to be.

It is to my understanding that it wasn't the name "Shaolin" that was being trademarked. I thought it was the name "Shaolin Temple" with both words in it (according to a reliable source). My main concern and where it could get nasty is can the trademark be enforced world wide and what will that do to the monks in America? Can the monks use Shaolin in the name of their school? I would like to believe that the monks here would have a right to use it since the monks lived and trained at shaolin for some time. Time will only tell.

[doc]

The issue gets better....

I just got a very informative email from someone in another country.

It is starting.

I'll put it together and post it as soon as possible.

[shaolinstylee]

Please do Doc.. thank you again for keeping us "informed"

[doc]

I told you this was getting to be more interesting. I kept this issue hidden since January until I had the opportunity to make sure that this issue was public, had all the details, and, until I had the permission of those involved to discuss it.

I have decided to not keep these posts anonymous, as is my typical and customary thing to do. The figures have already made themselves public in the public domain. The opinions expressed in the following emails are opinions, and are not to be construed as facts.

Hi Doc,

do you still remember me? We had some email discussions about Shaolin before russbo.com's success had started. I've visited Shaolin several times and will do so in future. I run the german website www.shaolin-tempel.de and now one of Shi Yong Xin's partners, Rainer Deyhle from Berlin, is trying to kick me off. He failed in his first attempt to get the site closed, but were offline for four weeks until we had all evidence to defend ourselves.

I wouldn't reject a helping hand. The opponents had made some nice hundreds of millions in the last years and have left behind the ruin of a musical company (Stella), some hundred millions of never pad back public loans and some tens of thousands of normal people, who had invested their money and lost all. So you see, not a weak enemy I'm fighting with.

Hope to hear from you soon,

Regards,

Wilfried


Hi

Yes, I kind of remember you. And when did russbo.com become successful? LOL

I kind of expected this. Yongxin to get into bed with various people around the world, and take control of the name.

As I see it, you've got a problem. I've always said that he couldn't get away with trademarking the name "shaolin", as it is too common, but, the name "shaolin temple", well, there's kind of only one. He no doubt will be able to control that.

Not sure what to tell you. Have you read my "trademarking the shaolin name" TOPIC on the web site? Lot'sof info in there. And what do you think of my bringing this subject up on my website?? I'll take your name off. Might be interesting to get some feedback from others. It wouldn't hurt.

Let me know.
doc



Hi doc,

thanks for your quick answer. Well, russbo.com at least has all potential to create from it whatever you want. Once you find out what this may be. Congratulations.

O.K., my problem of course has something to do with my decision to lend the name "shaolin tempel" (temple) for my website. On the other hand I had thought of protecting the address for what I think should be linked up with the idea of Shaolin like I understand it. As it seems now, I was some kind of right. Shi Yongxin's german partner Rolf Deyhle tries to commercialize shaolin in a bad manner; I do not recect making money, but I see how cruel they are trying to kick off all minor gong fu schools in Europe, although many of them are thirty or more years old. So they taught gong fu here when in Shaolin sheep were the only life form to be seen in the Shaolin valley.

The Deyhles (father and son) registered a trademark for "Shaolin Tempel Deutschland", maybe they'll lose it if I can keep my priority deriving from my website. If so, they would have to rename their company (which is a ltd.) and maybe then owe me royalties for the past four years. Isn't this madness?

I would prefer not to have these discussions, but sometimes one can't choose the fights. I'll come back to russbo.com to read the trademark section and yes, I would like to see the topic on your website. It still is some kind of "real monks" discussion, but now there are some real bad guys on their way to steal Shaolin from the hearts of all who believe in it. I'm sure they will create their own (bad) karma this way, but maybe I don't want to wait until it works

I had planned to go to Shaolin in May, but now I don't now if I will (and I have hurt my knee when fighting with a Judo practitioner on wednesday; o.k., I've won the fight, but he is not hurt).

Keep up your good work, still hope to meet you someday somewhere,

Wilfried


HI

Understand. This is truly goiing to be a mess.

I would like to use your emails on the site. Hoever, I prefer to keep people anonymous, as usual. It might be difficult to talk about the shaolin temple website in Germany without people figuring out it's you, so, it's your call. Do I have your permission to take this and run with it? And how would you deal with the names ivolved?

Stay well. The storm is coming.

doc



Hi Doc,

yes, and still fighting. I had to think about how we should deal with the informations of which some I can confirm myself and some are second hand. Rainer Deyhle's lawyers and mine will meet in Berlin high court on April, 27th. I don't think we can do something wrong to publish the facts, but I would like to keep the names out. If someone visits my website where I published the court's first decision and the letter Rainer's lawyers had sent to me, he can read the names there.

Maybe you could help a little bit more. Rainer Deyhle has founded a political party in Berlin, called "Buddhistische Partei Deutschlands" http://www.die-bpd.de/ and still advertises that he does everything as the official representative of Shi Yongxin. So what we do have is the situation, that a chinese politician (where only one political party is legal and he is part of it) comes to Germany to take part in our democratic system where all citizens have the right to found their own party.

I asked my chinese friends, and some of them are engaged in chinese politics, too. They told me, the administration for religious affairs in Beijing wouldn't find this very amusing. Could you please ask all Shaolin friends to write to their chinese Embassy or even directly to the administration in Beijing and ask them questions about founding Shaolin political parties in Europe, in the USA and in China? I have heard that some official investigations against Shi Songxin are going on in China, and so we might have a chance to kick off Shi Yongxin and his world wide monopoly game with Shaolin.

Keep up good training!

Wilfried

Well, I've kept the names in these emails, because, now, at this time, a month after I had these discussions with Wilfied, the issue has become public.

I shall publish the documents with the translations from the German, soon.

[doc]

European Trademark of Shaolin

The following is from the European Trademark commission; a registration for the WORD (literal) Shaolin:

Trade mark: Shaolin
Application number: 001938547
Result: 2 of 4


Nice classification: 3
List of goods and services: Perfumery, essential oils, cosmetics, hair lotions.

Nice classification: 5
List of goods and services: Pharmaceutical products and health-care products; remedies, in particular ointments and creams; dietetic substances adapted for medical use.

Nice classification: 8
List of goods and services: Cutlery, side arms, in particular weapon-like Chinese articles for martial arts training.

Nice classification: 9
List of goods and services: Computer programs and computer software, in particular screen savers.

Nice classification: 16
List of goods and services: Paper, cardboard and goods made from these materials, included in class 16; printed matter; bookbinding material; photographs; artists' materials; paint brushes; instructional and teaching material (except apparatus).

Nice classification: 25
List of goods and services: Clothing, footwear, headgear, in particular sportswear.

Nice classification: 28
List of goods and services: Games, in particular computer games; toys; in particular toy figures, souvenirs in the form of figurines; gymnastic and sporting articles, in particular for far eastern martial arts, included in class 28.

Nice classification: 30
List of goods and services: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, honey, treacle; yeast; salt, mustard; vinegar, sauces (condiments); spices.

Nice classification: 39
List of goods and services: Travel arrangement.

Nice classification: 41
List of goods and services: Education; training; entertainment; sporting and cultural activities; in particular martial arts training, martial arts and fitness training.

Nice classification: 42
List of goods and services: Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; in particular massage based on traditional Chinese medicine; providing saunas and solaria, computer programming.


Description

No entry for application number: 001938547

Owner

First name: Rainer
Surname: Deyhle
Number: 101125
Nature of Legal person: Natural Person
Address: Trabener Str. 25
Post code: 14193
Town: Berlin
Country: DE
Correspondence address: Rainer Deyhle
Trabener Str. 25
D-14193 Berlin
ALEMANIA


Representative

Association name: GRAF VON WESTPHALEN BAPPERT & MODEST
Number: 24867
Address: Rauchstr. 26
Post code: 10787
Town: Berlin
Country: DE
Correspondence address: GRAF VON WESTPHALEN BAPPERT & MODEST
Rauchstr. 26
D-10787 Berlin
ALEMANIA
Telephone: 00 49-307261110
Fax: 00 49-30726111123
E-mail: kay.wagner@westphalen-law.com