15 U.S.C. § 1141k — Duration, affidavits and fees

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 Page 1336 TITLE 15—COMMERCE AND TRADE § 1141l States, the holder may designate, by a docu- ment filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leav- ing with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the last designated address, or if the holder does not designate by a docu- ment filed in the United States Patent and Trademark Office the name and address of a per- son resident in the United States on whom may be served notices or process in proceedings af- fecting the mark, such notices or process may be served on the Director. (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.) Editorial Notes AMENDMENTS 2010—Pub. L. 111–146 amended section generally. Prior to amendment, section related to required affidavits and fees, contents of affidavit, notification of Direc- tor’s acceptance or refusal, and service of notice or process. § 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 in- dustrial or commercial establishment either in a country that is a Contracting Party or in a country that is a member of an intergovern- mental 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.) § 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 sub- chapter 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.) § 1141n. Rights of extension of protection When a United States registration and a sub- sequently issued certificate of extension of pro- tection to the United States are owned by the same person, identify the same mark, and list the same goods or services, the extension of pro- tection shall have the same rights that accrued to the registration prior to issuance of the cer- tificate 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.) CHAPTER 23—DISSEMINATION OF TECH- NICAL, SCIENTIFIC AND ENGINEERING IN- FORMATION Sec. 1151. Purpose of chapter. 1152. Clearinghouse for technical information; re- moval of security classification. 1153. Rules, regulations, and fees. 1153a. Repealed. 1154. Reference of data to armed services and other Government agencies. 1155. General standards and limitations; preserva- tion of security classification. 1156. Use of existing facilities. 1157. Relation to other provisions. § 1151. Purpose of chapter The purpose of this chapter is to make the re- sults of technological research and development more readily available to industry and business, and to the general public, by clarifying and de- fining the functions and responsibilities of the Department of Commerce as a central clearing- house for technical information which is useful to American industry and business. (Sept. 9, 1950, ch. 936, § 1, 64 Stat. 823.) § 1152. Clearinghouse for technical information; removal of security classification The Secretary of Commerce (hereinafter re- ferred to as the ‘‘Secretary’’) is directed to es- tablish and maintain within the Department of Commerce a clearinghouse for the collection and dissemination of scientific, technical, and engineering information, and to this end to take such steps as he may deem necessary and desir- able— (a) To search for, collect, classify, coordinate, integrate, record, and catalog such information from whatever sources, foreign and domestic, that may be available; (b) To make such information available to in- dustry and business, to State and local govern- ments, to other agencies of the Federal Govern- ment, and to the general public, through the preparation of abstracts, digests, translations, bibliographies, indexes, and microfilm and other reproductions, for distribution either directly or by utilization of business, trade, technical, and scientific publications and services; (c) To effect, within the limits of his authority as now or hereafter defined by law, and with the consent of competent authority, the removal of restrictions on the dissemination of scientific and technical data in cases where consideration of national security permit the release of such data for the benefit of industry and business. (Sept. 9, 1950, ch. 936, § 2, 64 Stat. 823.) § 1153. Rules, regulations, and fees The Secretary is authorized to make, amend, and rescind such orders, rules, and regulations as he may deem necessary to carry out the pro- visions of this chapter, and to establish, from time to time, a schedule or schedules of reason- able fees or charges for services performed or for documents or other publications furnished under this chapter. It is the policy of this chapter, to the fullest extent feasible and consistent with the objec-