A registered extension of protection of a trademark in the United States is a trademark that is registered with the United States Patent and Trademark Office (USPTO) under Section 66(a) in accordance with the Madrid Protocol. The registered extension of protection is treated almost identically to a trademark that is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration) with only a few very minor exceptions. In other words, essentially all of the benefits and protections afforded a trademark registered under Section 1(a) or Section 44(e) equally apply to a trademark registered under Section 66(a).
Who Can Seek a Registered Extension of Protection in the USA?
Only the holder of an international registration issued by the World Intellectual Property Organization (WIPO) may seek an extension of protection of its trademark in the USA. The holder is almost always a foreign individual or entity domiciled outside of the United States. In addition, the holder must declare in writing to (1) have a bona fide intention to use its mark in U.S. commerce, (2) reasonably believe that it is entitled to use its mark in U.S. commerce, and (3) reasonably believe that no other individual or entity has the right to use its mark (or a confusingly similar variation thereof) in U.S. commerce.
What are the Legal Requirements?
A trademark for which an extension of protection is sought must be eligible for registration on the Principal Register under the same laws, rules, and regulations that govern registration of trademarks under Section 1(a). The only significant difference is that the holder of the international registration is not required to demonstrate use of its trademark in commerce prior to the USPTO granting the extension of protection. In that way, an application for an extension of protection is treated much like a trademark application filed under Section 44(e).
Another difference is that a mark in an extension of protection is ineligible for registration on the Supplemental Register. This means that the holder of the international registration does not have the option of seeking registration of its mark on the Supplemental Register in the event the USPTO refuses registration on the Principal Register.
Should a trademark examining attorney at the USPTO find that the mark is ineligible for registration on the Principal Register for any reason whatsoever, the examining attorney will issue a provisional refusal (also referred to as a “nonfinal office action”). The holder of the international registration must file a response to the provisional refusal within six months or else the application for an extension of protection will go abandoned. Moreover, the holder must hire a U.S.-licensed attorney to file the response if the holder is domiciled outside of the United States or its territories (which is almost always the case).
Furthermore, an application for an extension of protection can be the subject of a trademark opposition on the same grounds as any other trademark application. And a registered extension of protection can be the target of a trademark cancellation on the same grounds as any other trademark registered on the Principal Register.
How is a Registered Extension of Protection Maintained?
The holder of a registered extension of protection must file a Section 71 Declaration of Use no earlier than five years after the date on which the extension of protection was granted by the USPTO, and no later than six years after the date on which it was granted by the USPTO. If the holder misses this one-year window, there is a six-month “grace period” in which the holder can still file the Section 71 and maintain the registered extension of protection.
The holder of the registered extension of protection must file a second Section 71 Declaration of Use no earlier than nine years after the date on which the extension of protection was granted, and no later than ten years after the date on which it was granted. Again, there is a “grace period” that extends this one-year window by another six months.
A Section 71 must then be filed between every subsequent ninth and tenth year anniversary of the registered extension of protection in order to keep it in full force and effect. If the holder is not domiciled in the USA, then the holder must hire a U.S.-licensed attorney to prepare and file each Section 71.
If the holder fails to timely file a Section 71 Declaration of Use, the USPTO will cancel the registered extension of protection. Moreover, if the holder fails to renew its international registration every ten years as required by the Madrid Protocol, WIPO will notify the USPTO that the international registration has lapsed. The USPTO will then automatically invalidate the registered extension of protection in the USA.
Do You Require Any Assistance?
I’m experienced US trademark attorney Morris Turek. If you have any questions about obtaining a registered extension of protection of your trademark in the United States, or maybe need assistance with responding to provisional refusal you received from the USPTO, please feel free to contact me for your no-obligation consultation. I can be reached by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through the contact form located near the bottom of this page. I look forward to hearing from you soon.