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

This is the October 2015 Edition of the TMEP

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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, 15 U.S.C. §1141h, 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), 15 U.S.C. §1141f(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, 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 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, 15 U.S.C. §1141g.

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. See 15 U.S.C. §1141j, 37 C.F.R. §7.30, and TMEP §1904.08 for information about the dependence of the extension of protection on the underlying international registration. 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), 15 U.S.C. §1126(f).

See TMEP §1609.01(a) regarding amendment of registered extensions of protection under §7 of the Trademark Act, 15 U.S.C. §1057.