15 USC 1141h
Examination of and opposition to request for extension of protection; notification of refusal

This document contains one section of the U.S. Trademark Act (found in Title 15 of the United States Code). This page was last updated in November 2005. All of the sections of the Trademark Act are listed on the Index page. A word index is also available.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§1141g) | Next Section (§1141i)

§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 66(a) [15 USC 1141f(a)] shall be examined as an application for registration on the Principal Register under this Act, and if on such examination it appears that the applicant is entitled to extension of protection under this title [15 USC § §1141 et seq.], 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 title [15 USC § §1141 et seq.] shall be subject to opposition under section 13 [15 USC 1063].

(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. If, a request for extension of protection is refused under subsection (a), the Director shall declare 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 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. In responding to a notification of refusal with respect to a mark, the holder of the international registration of the mark may 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 on whom notices or process in proceedings affecting the mark may be served. Such notices or process may be served upon the person designated by leaving with that person, or mailing to that person, a copy thereof at the address specified in the last designation filed. If the person 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.