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

Summary

When someone asks to extend protection of an international trademark in the United States, the U.S. Patent and Trademark Office must look at that request like a normal U.S. registration. If the request meets the rules, the Office will publish the mark in its Official Gazette. People can oppose the request, subject to special timing rules below. The Office cannot refuse an extension just because the mark was not used in U.S. commerce. But the Office must refuse any mark that could not be registered on the U.S. Principal Register. If the Office refuses, it must send a written notice saying the extension is denied and listing every reason for the denial. After the International Bureau tells the Office about a request, the Office has 18 months to send the International Bureau either a refusal based on its review, a refusal based on an opposition, or a notice that an opposition might still be filed. If the Office warned that an opposition might be filed, it then has to send any refusal based on that opposition within 7 months after the opposition period starts or within 1 month after it ends, whichever comes first. After those deadlines pass, the Office can’t add new reasons for refusal. If the Office misses those deadlines, the extension cannot be refused and the Office must issue a certificate. If a refusal is sent, the international registrant can file the name and U.S. address of someone to receive legal notices; if no one is named or found, notices may be sent to the Director.