1. U.S. Code
  2. title 15
  3. chapter 22
  4. subchapter IV
  5. § 1141f

Collapse to view only § 1141f. Effect of filing a request for extension of protection of an international registration to the United States

§ 1141. Definitions
In this subchapter:
(1) Basic application
(2) Basic registration
(3) Contracting Party
(4) Date of recordal
(5) Declaration of bona fide intention to use the mark in commerce
The term “declaration of bona fide intention to use the mark in commerce” means a declaration that is signed by the applicant for, or holder of, an international registration who is seeking extension of protection of a mark to the United States and that contains a statement that—
(A) the applicant or holder has a bona fide intention to use the mark in commerce;
(B) the person making the declaration believes himself or herself, or the firm, corporation, or association in whose behalf he or she makes the declaration, to be entitled to use the mark in commerce; and
(C) no other person, firm, corporation, or association, to the best of his or her knowledge and belief, has the right to use such mark in commerce either in the identical form of the mark or in such near resemblance to the mark as to be likely, when used on or in connection with the goods of such other person, firm, corporation, or association, to cause confusion, mistake, or deception.
(6) Extension of protection
(7) Holder of an international registration
(8) International application
(9) International Bureau
(10) International Register
(11) International registration
(12) International registration date
(13) Madrid Protocol
(14) Notification of refusal
(15) Office of a Contracting Party
The term “Office of a Contracting Party” means—
(A) the office, or governmental entity, of a Contracting Party that is responsible for the registration of marks; or
(B) the common office, or governmental entity, of more than 1 Contracting Party that is responsible for the registration of marks and is so recognized by the International Bureau.
(16) Office of origin
(17) Opposition period
(July 5, 1946, ch. 540, title XII, § 60, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1913.)

CITE AS: 15 USC 1141

§ 1141a. International applications based on United States applications or registrations
(a) In general
(b) Qualified owners
A qualified owner, under subsection (a), shall—
(1) be a national of the United States;
(2) be domiciled in the United States; or
(3) have a real and effective industrial or commercial establishment in the United States.
(July 5, 1946, ch. 540, title XII, § 61, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1915.)

CITE AS: 15 USC 1141a

§ 1141b. Certification of the international application
(a) Certification procedure
(b) Transmittal
(July 5, 1946, ch. 540, title XII, § 62, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1915.)

CITE AS: 15 USC 1141b

§ 1141c. Restriction, abandonment, cancellation, or expiration of a basic application or basic registration
With respect to an international application transmitted to the International Bureau under section 1141b of this title, the Director shall notify the International Bureau whenever the basic application or basic registration which is the basis for the international application has been restricted, abandoned, or canceled, or has expired, with respect to some or all of the goods and services listed in the international registration—
(1) within 5 years after the international registration date; or
(2) more than 5 years after the international registration date if the restriction, abandonment, or cancellation of the basic application or basic registration resulted from an action that began before the end of that 5-year period.
(July 5, 1946, ch. 540, title XII, § 63, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1915.)

CITE AS: 15 USC 1141c

§ 1141d. Request for extension of protection subsequent to international registration
The holder of an international registration that is based upon a basic application filed with the United States Patent and Trademark Office or a basic registration granted by the Patent and Trademark Office may request an extension of protection of its international registration by filing such a request—
(1) directly with the International Bureau; or
(2) with the United States Patent and Trademark Office for transmittal to the International Bureau, if the request is in such form, and contains such transmittal fee, as may be prescribed by the Director.
(July 5, 1946, ch. 540, title XII, § 64, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1916.)

CITE AS: 15 USC 1141d

§ 1141e. Extension of protection of an international registration to the United States under the Madrid Protocol
(a) In general
(b) If the United States is office of origin
(July 5, 1946, ch. 540, title XII, § 65, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1916.)

CITE AS: 15 USC 1141e

§ 1141f. Effect of filing a request for extension of protection of an international registration to the United States
(a) Requirement for request for extension of protection
(b) Effect of proper filing
Unless extension of protection is refused under section 1141h of this title, the proper filing of the request for extension of protection under subsection (a) shall constitute constructive use of the mark, conferring the same rights as those specified in section 1057(c) of this title, as of the earliest of the following:
(1) The international registration date, if the request for extension of protection was filed in the international application.
(2) The date of recordal of the request for extension of protection, if the request for extension of protection was made after the international registration date.
(3) The date of priority claimed pursuant to section 1141g of this title.
(July 5, 1946, ch. 540, title XII, § 66, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1916.)

CITE AS: 15 USC 1141f

§ 1141g. Right of priority for request for extension of protection to the United States
The holder of an international registration with a request for an extension of protection to the United States shall be entitled to claim a date of priority based on a right of priority within the meaning of Article 4 of the Paris Convention for the Protection of Industrial Property if—
(1) the request for extension of protection contains a claim of priority; and
(2) the date of international registration or the date of the recordal of the request for extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention for the Protection of Industrial Property) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention for the Protection of Industrial Property).
(July 5, 1946, ch. 540, title XII, § 67, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1917.)

CITE AS: 15 USC 1141g

§ 1141h. Examination of and opposition to request for extension of protection; notification of refusal
(a) Examination and opposition
(1) A request for extension of protection described in section 1141f(a) of this title shall be examined as an application for registration on the Principal Register under this chapter, and if on such examination it appears that the applicant is entitled to extension of protection under this subchapter, the Director shall cause the mark to be published in the Official Gazette of the United States Patent and Trademark Office.
(2) Subject to the provisions of subsection (c), a request for extension of protection under this subchapter shall be subject to opposition under section 1063 of this title.
(3) Extension of protection shall not be refused on the ground that the mark has not been used in commerce.
(4) Extension of protection shall be refused to any mark not registrable on the Principal Register.
(b) Notification of refusal
(c) Notice to International Bureau
(1) Within 18 months after the date on which the International Bureau transmits to the Patent and Trademark Office a notification of a request for extension of protection, the Director shall transmit to the International Bureau any of the following that applies to such request:
(A) A notification of refusal based on an examination of the request for extension of protection.
(B) A notification of refusal based on the filing of an opposition to the request.
(C) A notification of the possibility that an opposition to the request may be filed after the end of that 18-month period.
(2) If the Director has sent a notification of the possibility of opposition under paragraph (1)(C), the Director shall, if applicable, transmit to the International Bureau a notification of refusal on the basis of the opposition, together with a statement of all the grounds for the opposition, within 7 months after the beginning of the opposition period or within 1 month after the end of the opposition period, whichever is earlier.
(3) If a notification of refusal of a request for extension of protection is transmitted under paragraph (1) or (2), no grounds for refusal of such request other than those set forth in such notification may be transmitted to the International Bureau by the Director after the expiration of the time periods set forth in paragraph (1) or (2), as the case may be.
(4) If a notification specified in paragraph (1) or (2) is not sent to the International Bureau within the time period set forth in such paragraph, with respect to a request for extension of protection, the request for extension of protection shall not be refused and the Director shall issue a certificate of extension of protection pursuant to the request.
(d) Designation of agent for service of process
(July 5, 1946, ch. 540, title XII, § 68, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1917.)

CITE AS: 15 USC 1141h

§ 1141i. Effect of extension of protection
(a) Issuance of extension of protection
(b) Effect of extension of protection
From the date on which a certificate of extension of protection is issued under subsection (a)—
(1) such extension of protection shall have the same effect and validity as a registration on the Principal Register; and
(2) the holder of the international registration shall have the same rights and remedies as the owner of a registration on the Principal Register.
(July 5, 1946, ch. 540, title XII, § 69, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1918.)

CITE AS: 15 USC 1141i

§ 1141j. Dependence of extension of protection to the United States on the underlying international registration
(a) Effect of cancellation of international registration
(b) Effect of failure to renew international registration
(c) Transformation of an extension of protection into a United States application
(July 5, 1946, ch. 540, title XII, § 70, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1918.)

CITE AS: 15 USC 1141j

§ 1141k. Duration, affidavits and fees
(a) Time periods for required affidavits
Each extension of protection for which a certificate has been issued under section 1141i of this title shall remain in force for the term of the international registration upon which it is based, except that the extension of protection of any mark shall be canceled by the Director unless the holder of the international registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:
(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of extension of protection.
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of issuance of the certificate of extension of protection, and each successive 10-year period following the date of issuance of the certificate of extension of protection.
(3) The holder may file the affidavit required under this section within a grace period of 6 months after the end of the applicable time period established in paragraph (1) or (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.
(b) Requirements for affidavit
The affidavit referred to in subsection (a) shall—
(1)
(A) state that the mark is in use in commerce;
(B) set forth the goods and services recited in the extension of protection on or in connection with which the mark is in use in commerce;
(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and
(D) be accompanied by the fee prescribed by the Director; or
(2)
(A) set forth the goods and services recited in the extension of protection on or in connection with which the mark is not in use in commerce;
(B) include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and
(C) be accompanied by the fee prescribed by the Director.
(c) Deficient affidavit
(d) Notice of requirement
(e) Notification of acceptance or refusal
(f) Designation of resident for service of process and notices
(July 5, 1946, ch. 540, title XII, § 71, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1919; amended Pub. L. 111–146, § 3(d)(2), Mar. 17, 2010, 124 Stat. 68.)

CITE AS: 15 USC 1141k

§ 1141l. Assignment of an extension of protection

An extension of protection 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 either in a country that is a Contracting Party or in a country that is a member of an intergovernmental organization that is a Contracting Party.

(July 5, 1946, ch. 540, title XII, § 72, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1920.)

CITE AS: 15 USC 1141l

§ 1141m. Incontestability

The period of continuous use prescribed under section 1065 of this title for a mark covered by an extension of protection issued under this subchapter may begin no earlier than the date on which the Director issues the certificate of the extension of protection under section 1141i of this title, except as provided in section 1141n of this title.

(July 5, 1946, ch. 540, title XII, § 73, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1920.)

CITE AS: 15 USC 1141m

§ 1141n. Rights of extension of protection

When a United States registration and a subsequently issued certificate of extension of protection to the United States are owned by the same person, identify the same mark, and list the same goods or services, the extension of protection shall have the same rights that accrued to the registration prior to issuance of the certificate of extension of protection.

(July 5, 1946, ch. 540, title XII, § 74, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1920.)

CITE AS: 15 USC 1141n