‘‘(14) NOTIFICATION OF REFUSAL.—The term
‘notification of refusal’ means the notice sent by an
Office of a Contracting Party to the International
Bureau declaring that an extension of protection
cannot be granted.
‘‘(15) OFFICE OF A CONTRACTING PARTY.—The
term ‘Office of a Contracting Party’ means—
‘‘(A) the office, or governmental entity, of
a Contracting Party that is responsible for the
registration of marks; or
‘‘(B) the common office, or governmental
entity, of more than 1 Contracting Party that
is responsible for the registration of marks and
is so recognized by the International Bureau.
‘‘(16) OFFICE OF ORIGIN.—The term ‘office of
origin’ means the Office of a Contracting Party with
which a basic application was filed or by which a
basic registration was granted.
‘‘(17) OPPOSITION PERIOD.—The term ‘opposi-
tion period’ means the time allowed for filing an op-
position in the Patent and Trademark Office, includ-
ing any extension of time granted under section 13.
‘‘SEC. 
61. 
INTERNATIONAL 
APPLICATIONS 
BASED 
ON
UNITED 
STATES 
APPLICATIONS 
OR 
REG-
ISTRATIONS.
‘‘The owner of a basic application pending before the
Patent and Trademark Office, or the owner of a basic reg-
istration granted by the Patent and Trademark Office,
who—
‘‘(1) is a national of the United States;
‘‘(2) is domiciled in the United States; or
‘‘(3) has a real and effective industrial or com-
mercial establishment in the United States,
may file an international application by submitting to the
Patent and Trademark Office a written application in
such form, together with such fees, as may be prescribed
by the Commissioner.
‘‘SEC. 62. CERTIFICATION OF THE INTERNATIONAL APPLI-
CATION.
‘‘Upon the filing of an application for international
registration and payment of the prescribed fees, the Com-
missioner shall examine the international application for
the purpose of certifying that the information contained
in the international application corresponds to the infor-
mation contained in the basic application or basic registra-
tion at the time of the certification. Upon examination and
certification of the international application, the Commis-
sioner shall transmit the international application to the
International Bureau.
‘‘SEC. 63. RESTRICTION, ABANDONMENT, CANCELLATION,
OR EXPIRATION OF A BASIC APPLICATION OR
BASIC REGISTRATION.
‘‘With respect to an international application trans-
mitted to the International Bureau under section 62, the
Commissioner shall notify the International Bureau when-
ever the basic application or basic registration which is
the basis for the international application has been re-
stricted, abandoned, or canceled, or has expired, with re-
spect to some or all of the goods and services listed in
the international registration—
‘‘(1) within 5 years after the international reg-
istration date; or
‘‘(2) more than 5 years after the international
registration date if the restriction, abandonment, or
cancellation of the basic application or basic reg-
istration resulted from an action that began before
the end of that 5-year period.
‘‘SEC. 64. REQUEST FOR EXTENSION OF PROTECTION SUB-
SEQUENT 
TO 
INTERNATIONAL 
REGISTRA-
TION.
‘‘The holder of an international registration that is
based upon a basic application filed with the Patent and
Trademark Office or a basic registration granted by the
Patent and Trademark Office may request an extension
of protection of its international registration by filing such
a request—
‘‘(1) directly with the International Bureau; or
‘‘(2) with the Patent and Trademark Office for
transmittal to the International Bureau, if the re-
quest is in such form, and contains such transmittal
fee, as may be prescribed by the Commissioner.
‘‘SEC. 65. EXTENSION OF PROTECTION OF AN INTER-
NATIONAL REGISTRATION TO THE UNITED
STATES UNDER THE MADRID PROTOCOL.
‘‘(a) IN GENERAL.—Subject to the provisions of sec-
tion 68, the holder of an international registration shall
be entitled to the benefits of extension of protection of that
international registration to the United States to the ex-
tent necessary to give effect to any provision of the Madrid
Protocol.
‘‘(b) IF UNITED STATES IS OFFICE OF ORIGIN.—An
extension of protection resulting from an international
registration of a mark shall not apply to the United States
if the Patent and Trademark Office is the office of origin
with respect to that mark.
‘‘SEC. 66. EFFECT OF FILING A REQUEST FOR EXTENSION
OF PROTECTION OF AN INTERNATIONAL
REGISTRATION TO THE UNITED STATES.
‘‘(a) REQUIREMENT FOR REQUEST FOR EXTENSION
OF PROTECTION.—A request for extension of protection
of an international registration to the United States that
the International Bureau transmits to the Patent and
Trademark Office shall be deemed to be properly filed in
the United States if such request, when received by the
International Bureau, has attached to it a declaration of
bona fide intention to use the mark in commerce that is
verified by the applicant for, or holder of, the international
registration.
‘‘(b) EFFECT OF PROPER FILING.—Unless extension
of protection is refused under section 68, the proper filing
of the request for extension of protection under subsection
(a) shall constitute constructive use of the mark, confer-
ring the same rights as those specified in section 7(c), as
of the earliest of the following:
‘‘(1) The international registration date, if the
request for extension of protection was filed in the
international application.
‘‘(2) The date of recordal of the request for ex-
tension of protection, if the request for extension of
protection was made after the international registra-
tion date.
‘‘(3) The date of priority claimed pursuant to
section 67.
‘‘SEC. 67. RIGHT OF PRIORITY FOR REQUEST FOR EXTEN-
SION 
OF 
PROTECTION 
TO 
THE 
UNITED
STATES.
‘‘The holder of an international registration with an
extension of protection to the United States shall be enti-
tled to claim a date of priority based on the right of prior-
ity within the meaning of Article 4 of the Paris Convention
for the Protection of Industrial Property if—
‘‘(1) the international registration contained a
claim of such priority; and
‘‘(2)(A) the international application contained
a request for extension of protection to the United
States; or
‘‘(B) the date of recordal of the request for ex-
tension of protection to the United States is not
later than 6 months after the date of the first regu-
lar national filing (within the meaning of Article
4(A)(3) of the Paris Convention for the Protection
of Industrial Property) or a subsequent application
(within the meaning of Article 4(C)(4) of the Paris
Convention).
‘‘SEC. 68. EXAMINATION OF AND OPPOSITION TO REQUEST
FOR EXTENSION OF PROTECTION; NOTIFICA-
TION OF REFUSAL.
‘‘(a) EXAMINATION AND OPPOSITION.—(1) A request
for extension of protection described in section 66(a) shall
be examined as an application for registration on the Prin-
cipal Register under this Act, and if on such examination
it appears that the applicant is entitled to extension of
protection under this title, the Commissioner shall cause
the mark to be published in the Official Gazette of the
Patent and Trademark Office.
‘‘(2) Subject to the provisions of subsection (c), a re-
quest for extension of protection under this title shall be
subject to opposition under section 13. Unless successfully
opposed, the request for extension of protection shall not
be refused.
‘‘(3) Extension of protection shall not be refused
under this section on the ground that the mark has not
been used in commerce.
‘‘(4) Extension of protection shall be refused under
this section to any mark not registrable on the Principal
Register.
‘‘(b) NOTIFICATION OF REFUSAL.—If, a request for
extension of protection is refused under subsection (a), the
Commissioner shall declare in a notification of refusal (as
provided in subsection (c)) 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 Inter-
national Bureau transmits to the Patent and Trademark
Office a notification of a request for extension of protec-
tion, the Commissioner shall transmit to the International
Bureau any of the following that applies to such request:
‘‘(A) notification of refusal based on an exam-
ination of the request for extension of protection.
‘‘(B) A notification of refusal based on the fil-
ing of an opposition to the request.
‘‘(C) A notification of the possibility that an op-
position to the request may be filed after the end of
that 18-month period.
‘‘(2) If the Commissioner has sent a notification of
the possibility of opposition under paragraph (1)(C), the
Commissioner shall, if applicable, transmit to the Inter-
national 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 be-
ginning 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 exten-
sion 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 Commissioner 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 re-
quest for extension of protection, the request for extension
of protection shall not be refused and the Commissioner
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 registra-
tion of the mark shall designate, by a written document
filed in the 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 speci-
fied in the last designation so filed. If the person so des-
ignated cannot be found at the address given in the last