If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States are: (1) owned by the same person; (2) identify the same mark; and (3) list the same goods/services/collective membership organization, then the extension of protection shall have the same rights as those accrued to the U.S. national registration at the time the certificate of extension of protection issues. 15 U.S.C. §1141n; 37 C.F.R. §7.28(a); Article 4bis.
Legally, replacement takes place automatically, by operation of law. However, the USPTO will note the replacement in its records (and notify the IB accordingly) only if the holder of a registered extension of protection files a request that it do so. A request to note replacement of a U.S. national registration with a registered extension of protection must include:
- (1) The serial number or registration number of the extension of protection to the United States (i.e., the §66(a) application or registered extension of protection);
- (2) The registration number of the replaced U.S. registration; and
- (3) The fee required by 37 C.F.R. §7.6.
37 C.F.R. §7.28(b).
The holder cannot file the request to note replacement of the U.S. national registration until the registration based on the request for extension of protection issues. If the original U.S. national registration is active on the date the registration based on the request for extension of protection issues, the USPTO will accept a request to note replacement that is not filed until after the U.S. national registration is cancelled or expired. However, if the original U.S. national registration is in the grace period for filing an affidavit of continued use under Section 8 or a combined affidavit of continued use and renewal under Sections 8 and 9, 15 U.S.C. §§1058, 1059, at the time the registered extension of protection issues, the USPTO will not note replacement unless the required affidavit is filed and accepted.
“Replacement” does not invalidate the U.S. national registration. The U.S. national registration remains on the register, with all the rights attaching to such a registration, as long as the holder renews the registration under §9 of the Trademark Act and files the necessary affidavits of use or excusable nonuse under §8 of the Trademark Act. 37 C.F.R. §7.29. It is up to the holder to decide whether to maintain the replaced U.S. national registration.