15 U.S.C. § 1141i — Effect of extension of protection

Page 1334 TITLE 15—COMMERCE AND TRADE § 1141h 1 So in original. The comma probably should not appear. 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 ex- tension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the mean- ing 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.) § 1141h. Examination of and opposition to re- quest for extension of protection; notification of refusal (a) Examination and opposition (1) A request for extension of protection de- scribed 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 appli- cant 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 Reg- ister. (b) Notification of refusal If,1 a request for extension of protection is re- fused under subsection (a), the Director shall de- clare in a notification of refusal (as provided in subsection (c)) that the extension of protection cannot be granted, together with a statement of all grounds on which the refusal was based. (c) Notice to International Bureau (1) Within 18 months after the date on which the International Bureau transmits to the Pat- ent and Trademark Office a notification of a re- quest 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 ex- amination of the request for extension of pro- tection. (B) A notification of refusal based on the fil- ing 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 re- fusal on the basis of the opposition, together with a statement of all the grounds for the oppo- sition, 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 Inter- national Bureau by the Director after the expi- ration 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 para- graph, with respect to a request for extension of protection, the request for extension of protec- tion 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 In responding to a notification of refusal with respect to a mark, the holder of the inter- national registration of the mark may des- ignate, by a document filed in the United States Patent and Trademark Office, the name and ad- dress of a person residing in the United States on whom notices or process in proceedings af- fecting the mark may be served. Such notices or process may be served upon the person des- ignated by leaving with that person, or mailing to that person, a copy thereof at the address specified in the last designation filed. If the per- son designated cannot be found at the address given in the last designation, or if the holder does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person residing in the United States for service of notices or process in proceedings affecting the mark, the notice or process may be served on the Director. (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.) § 1141i. Effect of extension of protection (a) Issuance of extension of protection Unless a request for extension of protection is refused under section 1141h of this title, the Di- rector shall issue a certificate of extension of protection pursuant to the request and shall cause notice of such certificate of extension of protection to be published in the Official Ga- zette of the United States Patent and Trade- mark Office. (b) Effect of extension of protection From the date on which a certificate of exten- sion 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 registra- tion shall have the same rights and remedies Page 1335 TITLE 15—COMMERCE AND TRADE § 1141k 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.) § 1141j. Dependence of extension of protection to the United States on the underlying inter- national registration (a) Effect of cancellation of international reg- istration If the International Bureau notifies the United States Patent and Trademark Office of the can- cellation of an international registration with respect to some or all of the goods and services listed in the international registration, the Di- rector shall cancel any extension of protection to the United States with respect to such goods and services as of the date on which the inter- national registration was canceled. (b) Effect of failure to renew international reg- istration If the International Bureau does not renew an international registration, the corresponding ex- tension of protection to the United States shall cease to be valid as of the date of the expiration of the international registration. (c) Transformation of an extension of protection into a United States application The holder of an international registration canceled in whole or in part by the Inter- national Bureau at the request of the office of origin, under article 6(4) of the Madrid Protocol, may file an application, under section 1051 or 1126 of this title, for the registration of the same mark for any of the goods and services to which the cancellation applies that were covered by an extension of protection to the United States based on that international registration. Such an application shall be treated as if it had been filed on the international registration date or the date of recordal of the request for extension of protection with the International Bureau, whichever date applies, and, if the extension of protection enjoyed priority under section 1141g of this title, shall enjoy the same priority. Such an application shall be entitled to the benefits conferred by this subsection only if the applica- tion is filed not later than 3 months after the date on which the international registration was canceled, in whole or in part, and only if the ap- plication complies with all the requirements of this chapter which apply to any application filed pursuant to section 1051 or 1126 of this title. (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.) § 1141k. Duration, affidavits and fees (a) Time periods for required affidavits Each extension of protection for which a cer- tificate 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 un- less 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 peri- ods: (1) Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of exten- sion of protection. (2) Within the 1-year period immediately preceding the expiration of 10 years following the date of issuance of the certificate of exten- sion 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), to- gether with the fee described in subsection (b) and the additional grace period surcharge pre- scribed 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 com- merce; (B) set forth the goods and services recited in the extension of protection on or in connec- tion with which the mark is in use in com- merce; (C) be accompanied by such number of speci- mens 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 re- cited 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 If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the holder of the international registration, the deficiency may be corrected after the statutory time period, within the time prescribed after no- tification of the deficiency. Such submission shall be accompanied by the additional defi- ciency surcharge prescribed by the Director. (d) Notice of requirement Special notice of the requirement for such affi- davit shall be attached to each certificate of ex- tension of protection. (e) Notification of acceptance or refusal The Director shall notify the holder of the international registration who files any affi- davit required by this section of the Director’s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor. (f) Designation of resident for service of process and notices If the holder of the international registration of the mark is not domiciled in the United