Subsequent Designation Law and Legal Definition

Under trademark, subsequent designation is a request by the holder of an international trademark registration for extension of protection of the registration to additional contracting parties. This can be made only after the International Bureau (IB) registers the mark. A holder can file the subsequent designation directly with the IB. Pursuant to 15 USCS § 1141, a holder can also file a subsequent designation through the U.S. Patent and Trademark Office (USPTO). This is possible under certain circumstances such as:

  • the international registration is based on a basic application filed with the USPTO or a basic registration issued by the USPTO, and
  • the holder is a national of, is domiciled in, or has a real and effective business or commercial establishment in the U.S.

However, the USPTO does not certify subsequent designations. If a subsequent designation meets the requirements provided in 37 CFR 7.21, the USPTO will forward it to the IB. If the subsequent designation does not meet these requirements, the USPTO will not forward the subsequent designation, and will notify the holder of the reasons. Pursuant to 37 CFR 7.21, the USPTO’s transmittal fee is nonrefundable. The holder of an international registration submitting a subsequent designation through the USPTO can file either through TEAS or on the official paper form issued by the IB.