TMEP 1303.01(a)(v): Extension of Protection of International Registration – §66(a)

This is the October 2015 Edition of the TMEP

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1303.01(a)(v)    Extension of Protection of International Registration – §66(a)

Section 66(a) of the Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.44(a)(4)(v). The request must include a verified statement alleging that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation; that the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; and that to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity, except members, has the right to use the mark in commerce that the U.S. Congress can regulate 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 or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 37 C.F.R. §2.44(a)(4)(v); see 15 U.S.C. §§1051(b)(3)(B), 1054. For a collective trademark or collective service mark application, the required verified statement is not part of the international registration on file at the International Bureau of the World Intellectual Property Organization (“IB”); therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §2.44(b)(2).

See TMEP § 1303.01(b)(ii) for additional information regarding the requirements for the verified statement in applications under §66(a) of the Trademark Act.

A §66(a) applicant may not change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c) of the Act. 37 C.F.R. §§2.35(a), 2.44(c). See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application may be transformed into an application under §1 or §44.

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. Such basis may not be added or substituted as a basis in an application originally filed under §1 or §44.

Under 15 U.S.C. §1141g, Madrid Protocol Article 4(2), and 37 C.F.R. §7.27, the §66(a) applicant 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 six 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).

See Common Regs., Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2014) (“Guide to International Registration”), Para. B.II.07.32.