Westchester Women's Bar Association

Holders of International Trademark Registrations Extending Protection to the U.S.

The holder of an international registration may file a request for an extension of registration to the U.S. under § 66(a) of the Trademark Act, 15 U.S.C. §1141f(a). The United States Patent & Trademark Office ("USPTO") refers to this type of application as a "§ 66(a) application". The request to extend protection to the U.S. may be in the international application or in a subsequent designation. The International Bureau (the "IB") will transmit the request to the USPTO electronically. A basis under § 66(a) of the Trademark Act may not be combined with any other basis, unless the applicant meets the requirements for transformation under § 70(c) of the Trademark Act.

If a request for an extension of protection of an international registration is filed in the international application and transmitted to the USPTO, the filing date will be the international registration date. However, if the request for extension of protection is made in a subsequent designation, then the filing date of the § 66(a) application is the date on which the subsequent designation is recorded by the IB. A § 66(a) application must declare a bona fide intent to use the mark in U.S. commerce. However, use in commerce prior to registration is not required. See 15 U.S.C. § 1141h(a)(3). A holder of the registration will be required to file Use Affidavits or Excusable Nonuse Affidavits under § 71 of the Trademark Act to maintain a registered extension of protection. The Trademark Manual of Examining Procedure ("TMEP") recommends that actual use of the mark occur within two years of the issuance of the trademark registration by the USPTO. Keep in mind that three years of nonuse will result in a presumption of abandonment. Under § 73 of the Trademark Act, the holder's registration may become incontestable under § 15 of the Trademark Act, if it meets the requirements of that Section. See TMEP §1904.11.

A holder of a § 66(a) application may claim a right of priority within the meaning of Article 4 of the Paris Convention under certain circumstances, see TMEP 1904.01(e). Under § 66(b) of the Trademark Act, unless the extension of protection is refused, the filing of the request for extension of protection constitutes constructive use of the mark, and the holder will receive the same protections afforded to an applicant indicated 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 was made in the international application; (2) the date of recordal of the subsequent designation requesting extension to the U.S. if the request for extension to the U.S. was made after the international registration date; or (3) the date of priority claimed under § 67 of the Trademark Act. See TMEP § 1904.01(g) for more on constructive use.

A § 66(a) application will be examined by the USPTO under the same standards as any other application for registration in the U.S. on the Principal Register. In a § 66(a) application, the IB controls the classification. Therefore, the IB would refuse any classification change made during examination. In other words, in a 66(a) classification the following types of amendments are prohibited: (1) changing classification, unless the IB sends a notice of correction; (2) adding a classification, not the subject of the goods or services in the request; and (3) transferring goods and/or services between classes in a multi-class application. Most of the time, the USPTO's Examining Attorney will either: (1) accept the identification of goods/services; (2) declare the identification indefinite, but find the goods and services within the scope of the class; or (3) declare the identification indefinite, and find the goods and services are not included in the scope of the class indicated. Regarding oppositions, a §66(a) application is also subject to typical opposition procedures before the Trademark Trial and Appeal Board. See TMEP §1904.04.

Another important difference between 66(a) applications and other trademark applications being reviewed at the USPTO is that the Trademark Act does not provide for a Supplemental Register for extensions of protection. All marks in extensions of protection must register on the Principal register. If there is a refusal, it must be communicated to the IB within 18 months of the date the IB transmitted the request to the USPTO. Regarding assignments, extensions of protection can be assigned under § 72 of the Trademark Act, but only to a person who is a national of, is domiciled in, or has a bona fide commercial establishment in a country that is either a party to the Madrid Protocol or a member of an intergovernmental organization that is a party to the Madrid Protocol. However, the assignment must first be recorded with the IB before the Assignment Division of the USPTO will record the assignment. See TMEP §1904.06. For more on §66(a) applications see TMEP §§ 1904-1906 which are processed through the IB and transmitted electronically to the USPTO. For information on international applications and registrations originating from the U.S. see TMEP §§ 1901-1903, these applications are processed by the USPTO's Madrid Processing Unit. If you have questions, concerning § 66(a) applications, please contact the firm for a courtesy consultation.

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