15 U.S.C. § 1141g — Right of priority for request for exten-

Page 1333 TITLE 15—COMMERCE AND TRADE § 1141g (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.) § 1141b. Certification of the international appli- cation (a) Certification procedure Upon the filing of an application for inter- national registration and payment of the pre- scribed fees, the Director shall examine the international application for the purpose of cer- tifying that the information contained in the international application corresponds to the in- formation contained in the basic application or basic registration at the time of the certifi- cation. (b) Transmittal Upon examination and certification of the international application, the Director shall transmit the international application to the International Bureau. (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.) § 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 no- tify 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 registra- tion— (1) within 5 years after the international reg- istration date; or (2) more than 5 years after the international registration date if the restriction, abandon- ment, or cancellation of the basic application or basic registration resulted from an action that began before the end of that 5-year pe- riod. (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.) § 1141d. Request for extension of protection sub- sequent 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 Trade- mark Office for transmittal to the Inter- national 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.) § 1141e. Extension of protection of an inter- national registration to the United States under the Madrid Protocol (a) In general Subject to the provisions of section 1141h of this title, the holder of an international reg- istration shall be entitled to the benefits of ex- tension of protection of that international reg- istration to the United States to the extent nec- essary to give effect to any provision of the Ma- drid Protocol. (b) If the United States is office of origin Where the United States Patent and Trade- mark Office is the office of origin for a trade- mark application or registration, any inter- national registration based on such application or registration cannot be used to obtain the ben- efits of the Madrid Protocol in the United States. (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.) § 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 pro- tection A request for extension of protection of an international registration to the United States that the International Bureau transmits to the United States Patent and Trademark Office shall be deemed to be properly filed in the United States if such request, when received by the International Bureau, has attached to it a declaration of bona fide intention to use the mark in commerce that is verified by the appli- cant for, or holder of, the international registra- tion. (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 ex- tension of protection, if the request for exten- sion of protection was made after the inter- national 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.) § 1141g. Right of priority for request for exten- sion of protection to the United States The holder of an international registration with a request for an extension of protection to 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