1904.01    Filing Request for Extension of Protection to United States

The holder of an international registration may file a request for extension of protection of that registration to the United States under §66(a) of the Trademark Act, 15 U.S.C. §1141f(a).  The request for extension of protection to the United States may be included in the international application, or in a subsequent designation made after the IB registers the mark.  The IB will transmit the request for extension of protection to the United States to the USPTO electronically.  The USPTO refers to a request for extension of protection to the United States as a "§66(a) application."  37 C.F.R. §7.25(b).

1904.01(a)    §66(a) Basis for U.S. Applications

Section 66(a) of the Trademark Act provides a basis for filing in the United States based on the Madrid Protocol.  See 37 C.F.R. §§2.34(a)(5), 2.44(a)(4)(v), 2.45(a)(4)(v).  A basis under §66(a) may not be combined with any other basis.  37 C.F.R. §§2.34(b), 2.44(c), 2.45(c).  A §66(a) applicant may not change the basis unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c).  37 C.F.R. §2.35(a).  See TMEP §1904.09 regarding transformation.

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO and cannot be added or substituted as a basis in an application originally filed under §1 or §44.

1904.01(b)    Filing Date

If a request for extension of protection of an international registration to the United States is made in an international application, the filing date of the §66(a) application is the international registration date.  If a request for extension of protection to the United States is made in a subsequent designation, the filing date of the §66(a) application is the date on which the subsequent designation was recorded by the IB.  15 U.S.C. §1141f(b); 37 C.F.R. §7.26.

1904.01(c)    Declaration of Intent to Use Required

Section 66(a) of the Trademark Act requires that a request for extension of protection to the United States include a declaration of bona fide intention to use the mark in commerce. 15 U.S.C. §§1141f(a).  For a trademark or service mark application, such declaration must specify that the applicant/holder has a bona fide intention to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation. 37 C.F.R. §§2.33(e)(1), 2.34(a)(5); see 15 U.S.C. §§1127,  1141(5).  This declaration must also include a statement that: the signatory is properly authorized to execute the declaration on behalf of the applicant/holder; the signatory believes the applicant/holder to be entitled to use the mark in commerce on or in connection with the goods or services specified in the international application/subsequent designation; and to the best of his/her knowledge and belief, no other person, firm, corporation, association, or other legal entity has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive.  37 C.F.R. §§2.33(e)(2)-(4), 2.34(a)(5); see 15 U.S.C. §§1127,  1141(5).

The declaration must be signed by:  (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or (3) an attorney authorized to practice before the USPTO under 37 C.F.R. §11.14  who has an actual written or verbal power of attorney or an implied power of attorney from the applicant.  37 C.F.R. §2.193(e)(1); TMEP §611.03.

The USPTO has provided the IB a declaration of bona fide intention to use the mark in commerce for a trademark or service mark, which is part of the official IB form package for international applications and subsequent designations in which the United States is designated for an extension of protection (IB Form MM18).  Instructions as to who is a proper party to sign the declaration have also been provided to the IB.

The IB will ensure that the MM18 form is annexed to the international application or subsequent designation in which there is a request for extension of protection to the United States, that the wording of the declaration has not been altered, and that the document has been signed before forwarding the request for extension of protection to the USPTO.  The IB does not send the verified statement to the USPTO.

The verified statement remains part of the international registration on file with the IB.  37 C.F.R. §2.33(e).  Accordingly, the examining attorney will not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the verification of a trademark or service mark application on file with the IB.  In cases where the applicant voluntarily files a substitute declaration with the USPTO, the substitute declaration will be examined according to the same standards used for examining any other declaration.  

See TMEP §1904.02(d) for information regarding the verified statement for a §66(a) application for a collective trademark, collective service mark, collective membership mark, or certification mark.

See also TMEP §804.05 for further information about declarations in §66(a) applications for trademarks and service marks, §1303.01(a)(v) and §1303.01(b)(ii) for information about declarations in §66(a) applications for collective trademarks and collective service marks, §1304.02(a)(v) and §1304.02(b)(ii) for declarations in §66(a) applications for collective membership marks, and §1306.02(a)(v) and §1306.02(b)(ii) for declarations in §66(a) applications for certification marks.  

1904.01(d)    Use Not Required  

Use in commerce prior to registration is not required.  15 U.S.C. §1141h(a)(3).  However, after registration, a holder is required to periodically file an affidavit of use or excusable nonuse under §71 of the Trademark Act, 15 U.S.C. §1141k,  to maintain a registered extension of protection.  37 C.F.R. §7.36(b).  See TMEP §1613 for additional information about this affidavit.

1904.01(e)    Priority  

A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention for the Protection of Industrial Property if:

  • (1) The request for extension of protection contains a claim of priority;
  • (2) The request for extension of protection specifies the filing date, serial number, and country of the application that forms the basis for the claim of priority; and
  • (3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4A(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4C(4) of the Paris Convention).

15 U.S.C. §1141g; Article 4(2);  see also Paris Convention for the Protection of Industrial Property art. 4D, Mar. 20, 1883.

To be eligible for a claim of priority in a §66(a) application, the holder must file the request for extension of protection to the United States within 6 months of the date of the filing that forms the basis of the priority claim.  If the United States is designated for an extension of protection in an international application, the international registration date cannot be later than 6 months after the date of the filing that formed the basis of the priority claim.  If a request for extension of protection to the United States is made in a subsequent designation, the date of recordal of the subsequent designation cannot be later than 6 months after the date of the filing that formed the basis of the priority claim.  The USPTO's electronic systems use the dates provided in the international registration to automatically calculate whether an application receives the benefit of a priority claim.  If the "Priority Claimed" field indicates "YES," the "Priority Claimed Date" is to be treated as the effective filing date.  See TMEP §206.02 for information on claiming priority under §67, 15 U.S.C. §1141g.  If the "Priority Claimed" field indicates "NO," this means the priority claim is outside the 6-month filing date that forms the basis of the priority claim, even if priority information is included in the §66(a) application. If otherwise issuing an Office action, an advisory may be included to notify the applicant that their priority claim will not be honored. However, the advisory is not necessary if the application is in condition for publication upon initial examination.

In some cases, another U.S. application filed after the §66(a) applicant’s priority date may proceed to publication or registration because the request for extension of protection for the §66(a) application was not yet of record in the United States when the examining attorney searched USPTO records for conflicting marks. If the USPTO learns that a §66(a) application is entitled to priority over another pending application before the other mark registers, the USPTO will take appropriate action to give the §66(a) application the priority to which it is entitled. The §66(a) applicant may bring the priority-date issue to the USPTO’s attention by submitting a letter of protest in the other pending application. See TMEP §1715 regarding letters of protest.

If an examining attorney discovers a conflicting application entitled to priority under §66(a) after taking action in a case, the examining attorney must issue a supplemental action correcting the situation. If the mark has been published, the examining attorney must request jurisdiction before issuing the action. See TMEP §1504.01 and §1504.04(a) regarding the examining attorney’s jurisdiction.

However, if the conflicting mark has already registered, the USPTO does not act to cancel the registration sua sponte. The §66(a) applicant may seek to cancel the registration by filing a petition for cancellation with the Trademark Trial and Appeal Board.

1904.01(f)    Filing Fee

The filing fee for a §66(a) application will be sent to the USPTO by the IB.  The examining attorney should not require additional filing fees during examination, except where the application is divided due to a change in ownership with respect to some but not all of the goods/services.  See Article 8 and Regs. Rules 34–38 regarding international fees, and TMEP §1110.11 regarding dividing a §66(a) application.

1904.01(g)    Constructive Use

Under Trademark Act §66(b), unless extension of protection is refused, the filing of the request for extension of protection constitutes constructive use of the mark, conferring the same rights as those specified in §7(c), 15 U.S.C. §1057(c), as of the earliest of the following:

  • (1) The international registration date, if the request for extension of protection to the United States was filed in the international application;
  • (2) The date of recordal of the subsequent designation requesting extension of protection, if the request for extension of protection to the United States was made after the international registration date; or
  • (3) The date of priority claimed pursuant to §67.

1904.01(h)    May Not be Based on USPTO Basic Application or Registration

An international registration in which the United States is the Office of Origin (i.e., an international registration based on a basic application pending in the USPTO or a basic registration issued by the USPTO) may not be used to obtain an extension of protection to the United States.  15 U.S.C. §1141e(b); Article 3bis.  The IB will not send a request for extension of protection to the United States if the international registration is based on a USPTO basic application and/or registration.

1904.01(i)    Requirement for Representation Based on Domicile of §66(a) Applicant

Foreign-domiciled applicants must be represented before the USPTO by a qualified U.S. attorney. An applicant whose domicile is not located within the United States or its territories (see TMEP §§601.01, 601.01(b)–(b)(1) regarding domicile) must be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (see TMEP §602 regarding persons authorized to practice before the USPTO in trademark matters). 37 C.F.R. §§2.11(a), 7.25(a); see TMEP §602. See TMEP §601.01 regarding determining domicile and the examination procedure for requiring representation of foreign-domiciled applicants.

Attorney identification information required. If the applicant is represented by an attorney qualified under 37 C.F.R. §11.14  or is required to appoint such an attorney under 37 C.F.R. §2.11(a)  due to its foreign domicile, an applicant must include the individual attorney’s name, postal address, email address, and bar information. 37 C.F.R. §§2.17(b)(3), 2.32(a)(4), 7.25(a). See TMEP §602.01(a) regarding the requirement for attorney identification information.

The first Office action will generally include requirements to appoint a qualified U.S. attorney and to provide his or her bar information and postal and email addresses because there currently are no provisions for designating such an attorney, attorney’s bar information, or postal and email addresses in a request for extension of protection received from the IB. See 37 C.F.R. §§2.11(a), 2.23(b), 2.32(a)(4), 7.25(a); TMEP §601. In addition, if the record is not clear that the applicant’s domicile address is outside the United States, the first action will also include a requirement for the domicile address. See TMEP §§601.01-601.01(c). However, if the application is otherwise in condition for approval for publication upon first action, the application can be approved without requiring the §66(a) applicant to appoint a U.S.-licensed attorney and provide his or her bar information and postal and email addresses prior to publication.

1904.01(j)    Requirement for Email Address of §66(a) Applicant

Applicants must provide and maintain a valid email address for correspondence. 37 C.F.R. §§2.23(b), 2.32(a)(2); see 37 C.F.R. §7.25(a). Although providing an email address is required for applicants filing under Trademark Act Sections 1 and/or 44 (37 C.F.R. §2.21(a)(1); TMEP §202), this is not a filing date requirement for a Section 66(a) application because these are transmitted to the USPTO by the International Bureau (IB) and generally do not include an e-mail address for receiving USPTO correspondence. See TMEP §803.05(b) regarding the examination procedure for requiring an applicant’s email address.

If a Section 66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney will not require the owner to first provide an email address prior to publication. However, the TEAS forms will require an email address for the owner in any subsequent submissions.