T.M.E.P. § 1601.01
Registrations Now Being Issued

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1601.01 Registrations Now Being Issued

Currently, the United States Patent and Trademark Office ("USPTO") issues registrations only under the Trademark Act of 1946, 15 U.S.C. §§1051 et seq. These are either Principal Register registrations or Supplemental Register registrations. See TMEP §801.02(a) regarding the Principal Register, and TMEP §801.02(b) regarding the Supplemental Register.

1601.01(a) Certificate of Registration

The USPTO issues registration certificates for all registrations resulting from applications based on §§1, 44 and 66(a) of the Trademark Act. The registration certificate includes the owner's name and address, the mark, the goods/services, and the international class(es). The certificate is placed in a registration jacket cover under seal and is signed by the Director of the USPTO.

1601.01(b) Duplicate Certificate of Registration

If the owner of the registration does not receive the original certificate of registration and there is proof in the record that non-receipt was due to a USPTO error (e.g., if the USPTO failed to properly enter a notice of change of address filed before the mailing date of the registration certificate), the USPTO will issue a duplicate certificate of registration if the owner files a written request for a duplicate certificate within one year of the registration date.

The owner of a registration may obtain a certified copy of the registration from the Certification Division of the Office of Public Records for a fee (see TMEP §111).

1601.01(c) Registered Extension of Protection of International Registration to the United States

Effective November 2, 2003, §66(a) of the Trademark Act, 15 U.S.C. 1141f(a), permits the holder of an international registration to file a request for extension of protection of the international registration to the United States. See TMEP §§1904 et seq.

Unless the request for extension of protection is refused under §68 of the Trademark Act, the USPTO will issue a certificate of extension of protection and publish notice of such certificate in the Official Gazette. Section 69(a) of the Trademark Act, 15 U.S.C. 1141i(a). The certificate of registration will look the same as the certificates issued for registrations resulting from applications based on §§1 and 44 of the Act. From the date of issuance of the certificate, the extension of protection has the same effect and validity as a registration on the Principal Register, and the holder of the international registration has the same rights and remedies as the owner of a registration on the Principal Register. Section 69(b) of the Trademark Act, 15 U.S.C. 1141i(b).

Under §66(b), unless the extension of protection is refused, the proper filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c) of the Trademark Act, as of the earliest of the following:

(1) The international registration date, if the request for extension of protection was made in the international application;

(2) The date of recordal of the subsequent designation requesting an extension of protection to the United States, if the request for extension of protection to the United States was made in a subsequent designation; or

(3) The date of priority claimed pursuant to §67 of the Trademark Act.

Upon registration, the USPTO will refer to an extension of protection to the United States as a "registration" or a "registered extension of protection." 37 C.F.R. 7.25(c).

A registered extension of protection remains part of the international registration after registration in the United States. In this respect, the registered extension of protection differs from a registration issuing from a §44 application, which exists independent of the underlying foreign registration, pursuant to §44(f).

A registered extension of protection cannot be amended under §7 of the Trademark Act. See TMEP §1609.01(a).