Effective July 2, 2025, the USPTO will accept requests for both full and partial replacement of earlier national trademark registrations with international registrations. Previously, the USPTO only permitted trademark holders to submit requests for full replacement, requiring goods and services to be identical in both the US registration and the international registration. Now, trademark owners may seek partial replacement for goods and services that overlap.
The new rule amends 37 C.F.R. 7.28 and brings the US into compliance with a Madrid Protocol amendment requiring member countries to provide for partial replacement of an earlier national registration.
The Madrid Protocol is an international treaty that allows a trademark owner to seek registration of its trademark in any member country by filing a single international application. “Replacement” under the Madrid Protocol enables a trademark owner to swap out their national registration with their international one – either fully (for all goods and services) or partially (for only some of the goods and services).
Procedurally, when submitting a request to note replacement, the USPTO will require trademark owners to specify the goods and/or services for which replacement is sought. It is also important to note that requests for replacement will not be processed until the extension of protection is registered.
Partial trademark registration replacement itself does not cancel or limit your rights under your national trademark registration. And, while trademark registration replacement may prove to be a beneficial strategy for some seeking to simplify their trademark portfolio or reduce costs, it may not be the correct path for all trademark owners. Trademark owners should consult an intellectual property attorney to determine whether full or partial replacement aligns with their brand protection strategy.
The USPTO’s final rule is available to read here.
For more information on this rule and its implications, please contact Fitch Even partner Mary F. Fetsco or associate Kerianne A. Strachan, authors of this alert.
Fitch Even IP Alert®
Mary F. Fetsco
Mary F. Fetsco has a diverse IP practice with a particular focus on litigation. Her experience includes brand enforcement and trademark infringement litigation, as well as patent licensing and infringement litigation.
Kerianne A. Strachan
Kerianne A. Strachan focuses her practice on domestic and foreign trademark prosecution, clearance, enforcement, and brand protection, as well as contract drafting and negotiation. She counsels clients that include Fortune 500 corporations, multinational manufacturers, middle-market ventures, nonprofit organizations, small businesses, and startups.
