1904.12    Replacement

If a United States national registration and a subsequently issued certificate of extension of protection of an international registration to the United States:  (1) are owned by the same person; (2) identify the same mark; and (3) list the same goods/services/collective membership organization, then the extension of protection shall have the same rights as those accrued to the U.S. national registration at the time the certificate of extension of protection issues.  15 U.S.C. §1141n; 37 C.F.R. §7.28(a); Article 4bis. If all of the goods/services/collective membership organization in the national registration are covered by the listing of goods/services/collective membership organization in the extension of protection, they are considered to be the same for the purposes of replacement.

Legally, replacement takes place automatically, by operation of law.  However, the USPTO will note the replacement in its records (and notify the IB accordingly) only if the holder of a registered or pending extension of protection files a request that it do so. If the request to note replacement is filed in reference to a pending request for extension of protection, the request will not be processed until the extension of protection registers.

A request to note replacement of a U.S. national registration with a registered extension of protection must include:

  • (1)   The serial number or registration number of the extension of protection to the United States (i.e., the §66(a) application or registered extension of protection);
  • (2)   The registration number of the replaced U.S. registration; and
  • (3)   The fee required by 37 C.F.R. §7.6.

37 C.F.R. §7.28(b). The fee is non-refundable.

The holder can file a request to note replacement of more than one U.S. national registration based on a single registered or pending extension of protection provided that all of the goods/services listed in each U.S. national registration are covered by the listing of goods/services in the relevant extension of protection. The request to note replacement will be denied if the U.S. national registration includes goods/services not covered by the relevant extension of protection. Therefore, filers should ensure that any goods/services that exceed the scope of the relevant extension of protection are deleted from the U.S. national registration before filing the request to note replacement. See TMEP §1609.03 regarding amending the identification of goods/services in a registration.

If the original U.S. national registration is active on the date the registration based on the request for extension of protection issues, the USPTO will accept a request to note replacement that is not filed until after the U.S. national registration is cancelled or expired. However, if the original U.S. national registration is in the grace period for filing an affidavit of continued use under §8 or a combined affidavit of continued use and renewal under §§8 and 9, 15 U.S.C. §§1058,  1059, at the time the registered extension of protection issues, the USPTO will not note replacement unless the required affidavit is filed and accepted.

"Replacement" does not invalidate the U.S. national registration.  The U.S. national registration remains on the register, with all the rights attaching to such a registration, as long as the holder renews the registration under §9 of the Trademark Act and files the necessary affidavits of use or excusable nonuse under §8 of the Trademark Act.  37 C.F.R. §7.29.  It is up to the holder to decide whether to maintain the replaced U.S. national registration.