T.M.E.P. § 1904.01
Filing Request for Extension of Protection to United States

Executive summary:

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1904.01 Filing Request for Extension of Protection to United States

The holder of an international registration may file a request for extension of protection of that registration to the United States. Section 66(a) of the Trademark Act, 15 U.S.C. 1141f. The request for extension of protection to the United States may be included in the international application, or in a subsequent designation made after the IB registers the mark. The IB will transmit the request for extension of protection to the United States to the USPTO electronically. The USPTO refers to a request for extension of protection to the United States as a "§66(a) application." 37 C.F.R. 7.25(b).

1904.01(a) Section 66(a) Basis

Section 66(a) of the Trademark Act provides a basis for filing in the United States. See 37 C.F.R. 2.34(a)(5). A §66(a) applicant cannot change the basis or claim more than one basis. 37 C.F.R. §§2.34(b)(3) and 2.35(a).

1904.01(b) Filing Date

If a request for extension of protection of an international registration to the United States is made in an international application, the filing date of the §66(a) application is the international registration date. If a request for extension of protection to the United States is made in a subsequent designation, the filing date of the §66(a) application is the date that the subsequent designation was recorded by the IB. 15 U.S.C. 1141f(b); 37 C.F.R. 7.26.

1904.01(c) Declaration of Intent to Use Required

Section 66(a) of the Trademark Act requires that a request for extension of protection to the United States include a declaration that the applicant has a bona fide intention to use the mark in commerce that can be controlled by the United States Congress. 15 U.S.C. 1141f(a). The declaration must include a statement that the person making the declaration believes the applicant to be entitled to use the mark in commerce; and that to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive. Section 60(5) of the Trademark Act, 15 U.S.C. 1141(5).

The declaration must be signed by (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney authorized to practice before the USPTO under 37 C.F.R. 10.14 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant. 37 C.F.R. 2.33(a).

The USPTO has provided the IB with wording for the declaration of the applicant's bona fide intention to use the mark in commerce, which is part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18). Instructions as to who is a proper party to sign the declaration pursuant to 37 C.F.R. 2.33(a) have also been provided to the IB.

The IB will check to ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO. The IB will not send the verified statement to the USPTO with the request for extension of protection.

The verified statement remains part of the international registration on file at the IB. 37 C.F.R. 2.33(e). The examining attorney will not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of the application. See TMEP §804.06 for further information about declarations in §66(a) applications.

1904.01(d) Use Not Required

Use in commerce prior to registration is not required. Section 68(a)(3) of the Trademark Act, 15 U.S.C. 1141h(a)(3). However, after registration, periodic affidavits of use or excusable nonuse are required to maintain a registered extension of protection. Section 71 of the Trademark Act, 15 U.S.C. 1141k. See TMEP §1613 for information about these affidavits.

1904.01(e) Priority

A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention if:

(1) The request for extension of protection contains a claim of priority;

(2) The request for extension of protection specifies the filing date, serial number and the country of the application that forms the basis for the claim of priority; and

(3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).

Section 67 of the Trademark Act, 15 U.S.C. 1141g; Madrid Protocol Article 4(2).

To be eligible for a claim of priority in a 66(a) application, a holder must file a request for extension of protection to the United States within 6 months of the date of the filing that forms the basis of the priority claim. If the United States is designated for an extension of protection in an international application, the international registration date cannot be later than 6 months after the date of the filing that formed the basis of the priority claim. If a request for extension of protection to the United States is made in a subsequent designation, the date of recordal of the subsequent designation cannot be later than 6 months after the date of the filing that formed the basis of the priority claim.

1904.01(f) Filing Fee

The filing fee for a §66(a) application will be sent to the USPTO by the IB. The examining attorney should not require additional fees during examination. See Article 8 and Common Regs. 34 through 38 regarding international fees.

1904.01(g) Constructive Use

Under §66(b) of the Trademark Act, unless extension of protection is refused, the 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, 15 U.S.C. 1057(c), 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 subsequent designation requesting extension of protection, if the request for extension of protection to the United States was made after the international registration date; or

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

1904.01(h) Cannot be Based on USPTO Basic Application or Registration

An international registration in which the United States is the Office of Origin (i.e., an international registration based on a basic application pending in the USPTO or a basic registration issued by the USPTO) cannot be used to obtain an extension of protection to the United States. Section 65(b) of the Trademark Act, 15 U.S.C. 1141e(b); Article 3bis. The IB will not send a request for extension of protection to the United States if the international registration is based on a USPTO basic application or registration.