U.S. Code » Title 15 » Chapter CHAPTER 22— TRADEMARKS › Subchapter SUBCHAPTER IV— THE MADRID PROTOCOL

15 U.S.C. § 1141f

Effect of filing a request for extension of protection of an international registration to the United States

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(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 United States 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 filingUnless extension of protection is refused under section 1141h of this title, the proper filing of the request for extension of protection under subsection (a) shall constitute constructive use of the mark, conferring the same rights as those specified in section 1057(c) of this title, 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 extension of protection, if the request for extension of protection was made after the international registration date.(3) The date of priority claimed pursuant to section 1141g of this title.(July 5, 1946, ch. 540, title XII, § 66, as added Pub. L. 107–273, div. C, title III, § 13402, Nov. 2, 2002, 116 Stat. 1916.)
Notes of Decisions
Cited in 5 cases (3 in the last 5 years), 2015–2025 · leading case: Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228 (9th Cir. 2022).
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Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228 (9th Cir. 2022). · cites it 5× “15 U.S.C. §§ 1141f(a), 1141h(a). If “it appears that the applicant is entitled to extension of protection,” then the PTO “shall cause the mark to be published” in its Official Gazette.”
Kelly Servs., Inc. v. Creative Harbor, LLC, 140 F. Supp. 3d 611 (E.D. Mich. 2015). · cites it 2× “Such registration is accomplished under Section 66(a) of the Lanham Act, 15 U.S.C. § 1141f. The mark holder in Sandro Andy registered the mark.”
Galperti, Inc. v. Galperti S.R.L. (Fed. Cir. 2019). · cites it 2× “It would also be contrary to 15 U.S.C. § 1141f, which explains that where, as here, a U.”
Sunsauce Foods Indus. Corp., Ltd v. Son Fish Sauce USA Corp. (N.D. Cal. 2024). “15 U.S.C. § 1141f(a) (“A request for extension of protection of 24 an international registration to the United States … shall be deemed to be properly filed in the 25 United States if such request … has attached to it a declaration of bona fide intention to use the 26 mark in…”
Sterling Computers Corp. v. Int'l Bus. Machines Corp. (D.S.D. 2025). “On June 4, 2020, IBM’s application to extend protection for STERLING to the United States pursuant to § 66(a) of the Lanham Act, 15 U.S.C. § 1141f(a), was assigned United States Trademark Application Serial Number 79/286,659 (hereinafter called the: ‘659 Application).”
— 15 U.S.C. § 1141f(a) — 4 cases
Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228 (9th Cir. 2022). “15 U.S.C. §§ 1141f(a), 1141h(a). If “it appears that the applicant is entitled to extension of protection,” then the PTO “shall cause the mark to be published” in its Official Gazette.”
Kelly Servs., Inc. v. Creative Harbor, LLC, 140 F. Supp. 3d 611 (E.D. Mich. 2015). “Such registration is accomplished under Section 66(a) of the Lanham Act, 15 U.S.C. § 1141f. The mark holder in Sandro Andy registered the mark.”
Sunsauce Foods Indus. Corp., Ltd v. Son Fish Sauce USA Corp. (N.D. Cal. 2024). “15 U.S.C. § 1141f(a) (“A request for extension of protection of 24 an international registration to the United States … shall be deemed to be properly filed in the 25 United States if such request … has attached to it a declaration of bona fide intention to use the 26 mark in…”
Sterling Computers Corp. v. Int'l Bus. Machines Corp. (D.S.D. 2025). “On June 4, 2020, IBM’s application to extend protection for STERLING to the United States pursuant to § 66(a) of the Lanham Act, 15 U.S.C. § 1141f(a), was assigned United States Trademark Application Serial Number 79/286,659 (hereinafter called the: ‘659 Application).”
— 15 U.S.C. § 1141f(b) — 1 case
Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228 (9th Cir. 2022). “15 U.S.C. §§ 1141f(a), 1141h(a). If “it appears that the applicant is entitled to extension of protection,” then the PTO “shall cause the mark to be published” in its Official Gazette.”
— 15 U.S.C. § 1141f(b)(1) — 1 case
Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228 (9th Cir. 2022). “15 U.S.C. §§ 1141f(a), 1141h(a). If “it appears that the applicant is entitled to extension of protection,” then the PTO “shall cause the mark to be published” in its Official Gazette.”
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