15 U.S.C. § 1141h — Examination of and opposition to re-

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