1904.02(a) Examined as Regular Application on the Principal Register
Under §68(a)(1) of the Trademark Act, a request for extension of protection will be examined under the same standards as any other application for registration on the Principal Register. 15 U.S.C. §1141h(a)(1). However, there is no provision in the Trademark Act for registration of a mark in a request for an extension of protection on the Supplemental Register. If the proposed mark is not registrable on the Principal Register, the extension of protection must be refused. 15 U.S.C §1141h(a)(4); 37 C.F.R. §§2.47(c), 2.75(c).
It is unnecessary for the examining attorney to review the international registration on file at the IB, since the IB will forward all the necessary information with the request for extension of protection or in subsequent notifications, such as notices of correction, limitation, or change to the name or address of the holder or holder’s representative.
Except for 37 C.F.R. §§2.21-2.23, 2.76, 2.88, 2.89, 2.130-2.131, 2.160-2.166, 2.168, 2.173, 2.175, 2.181-2.186, and 2.197, all rules in 37 C.F.R. Part 2 apply to a request for extension of protection of an international registration to the United States, including sections related to proceedings before the Trademark Trial and Appeal Board, unless stated otherwise. 37 C.F.R. §7.25(a). All rules in 37 C.F.R Part 11 relating to representation of others before the USPTO also apply to requests for extension of protection. See id.
See TMEP §1904.02(d) regarding specific examination issues relevant to a §66(a) application for a collective or certification mark.