Foreign Registration - Extension of Protection of an International Registration (Section 66(a))



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  • Applications filed under Section 66(a) are also filed and initially examined without a specimen of use.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • Applications filed under Section 66(a) are also filed and initially examined without a specimen of use.
  • Amendment to the Supplemental Register is not available for applications filed under Section 66(a) of the Trademark Act. Extension of protection shall be refused to any mark not registrable on the Principal Register.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • FOOTNOTE 2 "Amendment to the Supplemental Register is not available for applications filed under Section 66(a) of the Trademark Act. Extension of protection shall be refused to any mark not registrable on the Principal Register. Trademark Act §68(a)(4), 15 U.S.C. §1141h(a)(4)."
  • Applications based on Section 66(a) do not require the submission of a specimen of use prior to registration, unlike applications filed under Section 1(b).
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • However, unlike applications filed under Section 1(b), applications based on Section 66(a) of the Trademark Act do not require the submission of a specimen of use prior to registration.
  • Since Section 66(a) applications do not require the submission of a specimen of use prior to registration, a registrations could issue without the examining attorney being aware of the way the mark would be used or perceived.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • However, unlike applications filed under Section 1(b), applications based on Section 66(a) of the Trademark Act do not require the submission of a specimen of use prior to registration. Thus, applicant's registrations may have issued with the examining attorney not being aware of the way the mark would be used or perceived.
  • For applications under Section 66(a), it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted in the drawing and description of the mark.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • Therefore, in order to properly examine applications under Section 66(a), it is appropriate for examining attorneys to issue an ornamentation refusal if the mark is decorative or ornamental on its face as depicted on the drawing page and described in the description of the mark.6
  • In the case of intent-to-use applications filed under Section 1(b), examining attorneys are instructed to wait until a specimen of use has been filed, either with an amendment to allege use or statement of use, before issuing an ornamentation refusal in order to better understand the nature of the mark and how it will appear on the goods or packaging.
    • In re Right-On Co., Ltd., Serial Nos. 79014936; 79014939; 79015094 (TTAB 2008)
      • With regard to applicant's registrations issued under Section 66(a), we note that in the case of intent-to-use applications filed under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), examining attorneys are instructed to wait until a specimen of use has been filed, either with an amendment to allege use or statement of use, before issuing an ornamentation refusal in order to better understand the nature of the mark and how it will appear on the goods or packaging. See TMEP §1202.03(e).
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