§1141h Examination of and Opposition to Request for Extension of Protection; Notification of Refusal

Summary

The U.S. Patent and Trademark Office must treat a request to extend international trademark protection like a U.S. registration application. If the mark meets the rules, the Office will publish it in the Official Gazette. People may oppose the extension under the usual opposition rules. The Office cannot refuse an extension just because the mark has not been used in U.S. commerce, but it can refuse any mark that would not be allowed on the U.S. Principal Register. If the Office refuses, it must send a written notice that lists every reason for the refusal. After the International Bureau tells the Patent and Trademark Office about a request, the Office has 18 months to tell the International Bureau one of three things: a refusal after examining the request, a refusal because someone filed an opposition, or a warning that an opposition might be filed after that 18‑month period. If the Office warned about a possible opposition, it must send any refusal based on that opposition either within 7 months after the opposition period starts or within 1 month after it ends, whichever comes first. No new refusal reasons can be added after those deadlines. If the Office does not send any required notice in time, the extension cannot be refused and the Office must issue a certificate of extension. The international registrant may name a U.S. resident for service of papers; if none is named or cannot be found, papers may be served on the Director.