§1141h Examination of and opposition to request for extension of protection; notification of refusal

Summary

A request to extend trademark protection to the United States is treated like a normal application for the Principal Register. The U.S. Patent and Trademark Office (the Director) will examine it and, if it qualifies, publish the mark in the Official Gazette. Others may oppose the request. The Director cannot refuse the extension just because the mark has not been used in U.S. commerce, but must refuse any mark that cannot be registered on the Principal Register. If the Director refuses, they must send a written notice saying the refusal and all the reasons for it. The Director must tell the International Bureau within 18 months after getting the request whether they are refusing it after examination, refusing because of an opposition, or warning that an opposition might still be filed after the 18 months. If a warning was sent and an opposition happens, the Director must send a refusal with all reasons within 7 months after the opposition starts or within 1 month after it ends, whichever is earlier. After those deadlines, no new refusal reasons can be added. If no timely notice is sent, the extension cannot be refused and the Director must issue a certificate of extension. If the holder gets a refusal, they may name a U.S. resident to accept legal notices; if that person cannot be found or none is named, notices may be served on the Director.