T.M.E.P. § 1616
Replacement
Executive summary:
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1616 Replacement
If a U.S. national registration and a subsequently issued certificate of extension of protection of an international registration to the United States are (1) owned by the same person, (2) identify the same mark, and (3) list the same goods/services, the extension of protection shall have the same rights as those accrued to the U.S. national registration at the time the certificate of extension of protection issues. Section 74 of the Trademark Act, 15 U.S.C. 1141n; Article 4bis of the Madrid Protocol; 37 C.F.R. 7.28(a).
Legally, replacement takes place automatically, by operation of law. However, the USPTO will note the replacement in its records (and notify the IB accordingly) only if the holder of a registered extension of protection files a request that it do so. A request to note replacement of a U.S. national registration with a registered extension of protection must include:
(1) The serial number or registration number of the extension of protection to the United States;
(2) The registration number of the replaced U.S. registration; and
(3) The fee required by 37 C.F.R. 7.6.
The holder cannot file the request to note replacement of the U.S. national registration until the registration based on the request for extension of protection issues.
"Replacement" does not invalidate the U.S. national registration. The U.S. national registration remains on the register, with all the rights attaching to such a registration, as long as the holder renews the registration under §9 of the Trademark Act and files the necessary affidavits of use or excusable nonuse under §8 of the Trademark Act. 37 C.F.R. 7.29. It is up to the holder to decide whether to maintain the replaced U.S. national registration.