--- kind: "section" citation: "15 U.S.C. § 1141h" title: "15" title_heading: "Commerce and Trade" number: "1141h" heading: "Examination of and opposition to request for extension of protection; notification of refusal" release: "119-102" date: "2026-07-12" url: "https://uscodex.org/usc/15/1141h" units: - "Chapter 22 — Trademarks" - "Subchapter IV — The Madrid Protocol" --- # §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](/usc/15/1141.md?p=6) described in [section 1141f(a) of this title](/usc/15/1141f.md?p=a) 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](/usc/15/7a.md?p=3) is entitled to [extension of protection](/usc/15/1141.md?p=6) 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)](#c), a request for [extension of protection](/usc/15/1141.md?p=6) under this subchapter shall be subject to opposition under [section 1063 of this title](/usc/15/1063.md). - (3) [Extension of protection](/usc/15/1141.md?p=6) shall not be refused on the ground that the mark has not been used in commerce. - (4) [Extension of protection](/usc/15/1141.md?p=6) shall be refused to any mark not registrable on the Principal Register. - (b) **Notification of refusal—** If,[^1] a request for [extension of protection](/usc/15/1141.md?p=6) is refused under [subsection (a)](#a), the Director shall declare in a [notification of refusal](/usc/15/1141.md?p=14) (as provided in [subsection (c)](#c)) that the [extension of protection](/usc/15/1141.md?p=6) 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](/usc/15/1141.md?p=9) transmits to the Patent and Trademark Office a notification of a request for [extension of protection](/usc/15/1141.md?p=6), the Director shall transmit to the [International Bureau](/usc/15/1141.md?p=9) any of the following that applies to such request: - (A) A [notification of refusal](/usc/15/1141.md?p=14) based on an examination of the request for [extension of protection](/usc/15/1141.md?p=6). - (B) A [notification of refusal](/usc/15/1141.md?p=14) 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)](#c-1-C), the Director shall, if applicable, transmit to the [International Bureau](/usc/15/1141.md?p=9) a [notification of refusal](/usc/15/1141.md?p=14) 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](/usc/15/1141.md?p=17) or within 1 month after the end of the [opposition period](/usc/15/1141.md?p=17), whichever is earlier. - (3) If a [notification of refusal](/usc/15/1141.md?p=14) of a request for [extension of protection](/usc/15/1141.md?p=6) is transmitted under paragraph [(1)](#c-1) or [(2)](#c-2), no grounds for refusal of such request other than those set forth in such notification may be transmitted to the [International Bureau](/usc/15/1141.md?p=9) by the Director after the expiration of the time periods set forth in paragraph [(1)](#c-1) or [(2)](#c-2), as the case may be. - (4) If a notification specified in paragraph [(1)](#c-1) or [(2)](#c-2) is not sent to the [International Bureau](/usc/15/1141.md?p=9) within the time period set forth in such paragraph, with respect to a request for [extension of protection](/usc/15/1141.md?p=6), the request for [extension of protection](/usc/15/1141.md?p=6) shall not be refused and the Director shall issue a certificate of [extension of protection](/usc/15/1141.md?p=6) pursuant to the request. - (d) **Designation of agent for service of process—** In responding to a [notification of refusal](/usc/15/1141.md?p=14) with respect to a mark, the holder of the [international registration](/usc/15/1141.md?p=11) of the mark may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a [person](/usc/15/7a.md?p=6) 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](/usc/15/7a.md?p=6) designated by leaving with that [person](/usc/15/7a.md?p=6), or mailing to that [person](/usc/15/7a.md?p=6), a copy thereof at the address specified in the last designation filed. If the [person](/usc/15/7a.md?p=6) 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](/usc/15/7a.md?p=6) 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. ## Footnotes [^1]: So in original. The comma probably should not appear. ## Source credit (July 5, 1946, ch. 540, title XII, § 68, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1917.)