15 U.S.C. § 1141h : US Code - Section 1141H: Examination of and opposition to request for extension of protection; notification of refusal

Search 15 U.S.C. § 1141h : US Code - Section 1141H: Examination of and opposition to request for extension of protection; notification of refusal

(a) Examination and opposition
(1) A request for extension of protection described in section
1141f(a) of this title shall be examined as an application for
registration on the Principal Register under this chapter, and if
on such examination it appears that the applicant is entitled to
extension of protection under this subchapter, the Director shall
cause the mark to be published in the Official Gazette of the
United States Patent and Trademark Office.
(2) Subject to the provisions of subsection (c) of this section,
a request for extension of protection under this subchapter shall
be subject to opposition under section 1063 of this title.
(3) Extension of protection shall not be refused on the ground
that the mark has not been used in commerce.
(4) Extension of protection shall be refused to any mark not
registrable on the Principal Register.
(b) Notification of refusal
If,(!1) a request for extension of protection is refused under
subsection (a) of this section, the Director shall declare in a
notification of refusal (as provided in subsection (c) of this
section) that the extension of protection cannot be granted,
together with a statement of all grounds on which the refusal was
based.
(c) Notice to International Bureau
(1) Within 18 months after the date on which the International
Bureau transmits to the Patent and Trademark Office a notification
of a request for extension of protection, the Director shall
transmit to the International Bureau any of the following that
applies to such request:
(A) A notification of refusal based on an examination of the
request for extension of protection.
(B) A notification of refusal based on the filing of an
opposition to the request.
(C) A notification of the possibility that an opposition to the
request may be filed after the end of that 18-month period.
(2) If the Director has sent a notification of the possibility of
opposition under paragraph (1)(C), the Director shall, if
applicable, transmit to the International Bureau a notification of
refusal on the basis of the opposition, together with a statement
of all the grounds for the opposition, within 7 months after the
beginning of the opposition period or within 1 month after the end
of the opposition period, whichever is earlier.
(3) If a notification of refusal of a request for extension of
protection is transmitted under paragraph (1) or (2), no grounds
for refusal of such request other than those set forth in such
notification may be transmitted to the International Bureau by the
Director after the expiration of the time periods set forth in
paragraph (1) or (2), as the case may be.
(4) If a notification specified in paragraph (1) or (2) is not
sent to the International Bureau within the time period set forth
in such paragraph, with respect to a request for extension of
protection, the request for extension of protection shall not be
refused and the Director shall issue a certificate of extension of
protection pursuant to the request.
(d) Designation of agent for service of process
In responding to a notification of refusal with respect to a
mark, the holder of the international registration of the mark may
designate, by a document filed in the United States Patent and
Trademark Office, the name and address of a person residing in the
United States on whom notices or process in proceedings affecting
the mark may be served. Such notices or process may be served upon
the person designated by leaving with that person, or mailing to
that person, a copy thereof at the address specified in the last
designation filed. If the person designated cannot be found at the
address given in the last designation, 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 residing in the
United States for service of notices or process in proceedings
affecting the mark, the notice or process may be served on the
Director.