Requests for Extension of Protection (REPs) from foreign applicants

The WIPO will forward the “international registration” to the USPTO electronically. The basis for a REP is new, and referred to as a § 66(a) basis. This new basis is an addition to the currently existing bases: “actual use” basis under § 1(a), “intent-to-use” basis under § 1(b), and a foreign application or registration basis under § 44(d) or (e). Proving “use in commerce” under a § 66(a) basis is not necessary to obtain registration. The basis for a § 66(a) application may not be changed, unlike other bases, unless the REP itself is transformed to a national application. A foreign applicant must state in its international registration issued by the WIPO that it has a bona fide intent to use its trademark in the U.S. An extension of protection (EP), if granted, may only be registered on the Principal Register, not the Supplemental Register. REPs will be evaluated by the USPTO like normal applications. EPs must be “maintained” at the USPTO by submitting § 8 declarations of continuous use in the same manner that domestic applications are maintained.