PRIA, Government Policy, Made Personal

Summary

You must file a paper with the U.S. Patent and Trademark Office to keep an international mark’s U.S. extension active. You have to file within the one-year before the 6-year mark after the certificate was issued, and again within the one-year before 10 years and every 10 years after that. You get a 6-month grace period after each time window if you pay the regular fee and an extra late surcharge set by the Director. The filing must either say the mark is being used in U.S. commerce, list the goods or services it’s used on, include samples showing current use, and include the fee; or explain that the mark is not used because of special circumstances and not because you abandoned it, and include the fee. If your filing is missing something, you can fix it after you are told, but you must pay a deficiency surcharge and meet the deadline given. Each certificate will have a notice about this requirement. The USPTO will tell you if it accepts or refuses your filing and why. If the owner lives outside the U.S., they can name a U.S. resident to get legal notices; if they do not, or that person cannot be found, the notices may be sent to the Director.

Title 15, §1141k

Commerce and Trade, Source: USLM XML via OLRC

(a)Time periods for required affidavits

Each extension of protection for which a certificate has been issued under section 1141i of this title shall remain in force for the term of the international registration upon which it is based, except that the extension of protection of any mark shall be canceled by the Director unless the holder of the international registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:

(1)Within the 1-year period immediately preceding the expiration of 6 years following the date of issuance of the certificate of extension of protection.

(2)Within the 1-year period immediately preceding the expiration of 10 years following the date of issuance of the certificate of extension of protection, and each successive 10-year period following the date of issuance of the certificate of extension of protection.

(3)The holder may file the affidavit required under this section within a grace period of 6 months after the end of the applicable time period established in paragraph (1) or (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.

(b)Requirements for affidavit

The affidavit referred to in subsection (a) shall—

(1)(A)state that the mark is in use in commerce;

(B)set forth the goods and services recited in the extension of protection on or in connection with which the mark is in use in commerce;

(C)be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and

(D)be accompanied by the fee prescribed by the Director; or

(2)(A)set forth the goods and services recited in the extension of protection on or in connection with which the mark is not in use in commerce;

(B)include a showing that any nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark; and

(C)be accompanied by the fee prescribed by the Director.

(c)Deficient affidavit

If any submission filed within the period set forth in subsection (a) is deficient, including that the affidavit was not filed in the name of the holder of the international registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.

(d)Notice of requirement

Special notice of the requirement for such affidavit shall be attached to each certificate of extension of protection.

(e)Notification of acceptance or refusal

The Director shall notify the holder of the international registration who files any affidavit required by this section of the Director’s acceptance or refusal thereof and, in the case of a refusal, the reasons therefor.

(f)Designation of resident for service of process and notices

If the holder of the international registration of the mark is not domiciled in the United States, the holder may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the last designated address, or if the holder does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

Editorial Notes

Amendments

2010—Pub. L. 111–146 amended section generally. Prior to amendment, section related to required affidavits and fees, contents of affidavit, notification of Director’s acceptance or refusal, and service of notice or process.

§1141k Duration, Affidavits and Fees

Summary

Title 15, §1141k

Notes & Related Subsidiaries

Editorial Notes

Amendments

Citations & Metadata