TMEP 1904.05: Certificate of Extension of Protection

October 2017 Edition of the TMEP

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1904.05    Certificate of Extension of Protection

If the mark in a §66(a) application is published for opposition and is not opposed, or survives all oppositions filed, 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).  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. 15 U.S.C. §1141i(b).  The certificate of registration will look the same as the certificate issued for registrations resulting from applications under §1 and §44 of the Trademark Act ( see TMEP §1601.01(a)).

Upon registration, the USPTO will refer to an extension of protection to the United States as a "registration," "registered extension of protection," or a "§66(a) registration." 37 C.F.R. §7.25(c).

A registered extension of protection always remains part of and dependent upon the international registration.  In this respect, a registered extension of protection differs from a §44 registration, which is independent from the underlying foreign registration, pursuant to 15 U.S.C. §1126(f).

See TMEP §§1613 and 1904.10 regarding the requirement for an affidavit of use or excusable nonuse under §71 of the Trademark Act, 15 U.S.C. §1141k; TMEP §1905 regarding renewal and expiration of international registrations in general; and TMEP §1614 for information about renewal of registered extensions of protection.