Chapter 1000
Applications Under Section 44

1002.01 Eligible Applicants Under §44(e)

To be eligible for registration under §44(e), an applicant must meet the following requirements:

• (1) The applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration, or must extend reciprocal registration rights to nationals of the United States ( 15 U.S.C. §1126(b) ); and
• (2) The applicant must be the owner of a valid registration in the applicant’s country of origin( 15 U.S.C. §1126(c) , (e)) .

See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to a treaty or agreement, or provides reciprocal registration rights to United States nationals.

If an applicant does not meet the requirements listed above, the examining attorney must refuse registration under §44(e).   See SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014). The applicant may amend the application to claim §1(a) or §1(b) as a basis.  See TMEP §§806.03 et seq. regarding amendment of the basis.

An applicant domiciled in the United States cannot obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant’s country of origin.   See TMEP §1002.05 .

See TMEP §§1004 et seq. for additional information about the requirements for registration under §44(e).

1002.02 Eligible Applicants Under §44(d)

To be eligible for a priority filing date under §44(d), an applicant must meet the following requirements:

• (1) The applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to United States nationals; and
• (2) The foreign application that is the basis for the priority claim must be filed in a country that either is a party to a treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights to priority to United States nationals.

15 U.S.C. §§1126(b) ,  (d) .

See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides a right of priority to U.S. nationals.

If an applicant does not meet the requirements listed above, the examining attorney must advise the applicant that it is not entitled to priority.  If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect an acceptable basis before the application can be approved for publication or registration on the Supplemental Register.  See TMEP §1003.03 regarding registration basis for §44 applications and TMEP §806.03 regarding amendment of the basis.  The examining attorney must ensure that the priority claim is deleted from the Trademark database and conduct a new search of the records of the United States Patent and Trademark Office (“USPTO”) for conflicting marks.

To obtain a priority filing date under §44(d), the foreign application does not have to be filed in the applicant’s country of origin.  However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which the applicant relies for priority, the applicant must establish that the country in which the application was filed is its country of origin.   TMEP §1002.01 .  Therefore, if the applicant files a §44(d) priority claim based on an application from a treaty country other than the country in which the applicant is domiciled, the examining attorney must advise the applicant that in order to rely on the registration issuing from the identified foreign application as its basis for registration, the applicant will be required to establish that the country where the foreign application was filed is its country of origin.

It is important to keep in mind that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration.  A party who files under §44(d) must establish a basis for registration.   37 C.F.R. §2.34(a)(4)(iii) ; TMEP §1003.03 .  For example, a French corporation may rely on a first-filed application in Canada for its priority claim under §44(d), regardless of whether Canada is the applicant’s country of origin.  However, before the mark can be published for opposition in the United States, the French corporation must do one of the following:  (1) establish Canada as its country of origin and rely on the prospective Canadian registration as its basis for registration in the United States ( see TMEP §§1002.01 , 1002.04 ); (2) assert use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication in the United States; or (3) rely on a registration from France as its basis for registration in the United States.

An applicant domiciled or organized in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States .  See TMEP §1002.05 .

See TMEP §§1003 et seq. for additional information about the requirements for obtaining a priority filing date under §44.

1002.03 Establishing Entitlement Under a Treaty

In a §44 application, the examining attorney must confirm that:  (1) both the applicant’s country of origin and the country where the applicant has filed the application or obtained registration are parties to a treaty or agreement with the United States (or that they extend reciprocal rights to U.S. nationals by law); and (2) the specific benefit that the applicant is claiming under §44 (i.e., the right to a priority filing date under §44(d) and/or the right to registration under §44(e)) is provided for under the treaty or agreement.   See TMEP §§1002.01 , 1002.02 .

To determine whether a particular country has a treaty with the United States that provides for the benefit that the applicant is claiming under §44, examining attorneys should consult Appendix B of this manual.  Appendix B lists the members of the Paris Convention, Inter-American Convention, Buenos Aires Convention, World Trade Organization, European Union (“EU”), and certain countries entitled to reciprocal treatment under other international agreements, as well as websites where examining attorneys can obtain updated information about these treaties or agreements.

Some EU member states maintain special relationships with overseas countries and territories (OCTs), which include Aruba, Bonaire, Curaçao, Saba, St-Eustatius, St-Maarten, New Caledonia, French Polynesia, Wallis et Futuna, Saint-Pierre et Miquelon, and Mayotte. Generally, these OCTs are not parties to a relevant treaty or agreement with the United States, nor do they extend reciprocal rights to U.S. nationals by law, as required by Trademark Act Section 44. Therefore, if the applicant’s country of origin, or the country that issued the foreign registration, is one of these OCTs, the application is not entitled to priority under §44(d) or registration under §44(e) unless they fall under one of the exceptions below. See 15 U.S.C §1126(b) , (d) , (e) ; TMEP §§1002.01 , 1002.02 .

Note, however, that citizens of British overseas territories and Crown Dependencies are also citizens of the United Kingdom. See GOV.UK, Types of British Nationality, https://www.gov.uk/types-of-british-nationality/british-overseas-territories-citizen (accessed Aug. 2 2017). Therefore, individuals claiming citizenship in Anguilla, Bermuda, British Antarctic Territory, British Indian Ocean Territory, British Virgin Islands, Cayman Islands, Falkland Islands, Gibraltar, Montserrat. Pitcairn Islands, Saint Helena, Ascension and Tristan da Cunha, South Georgia and the South Sandwich Islands, Turks and Caicos Islands, the Bailiwick of Jersey, the Bailiwick of Guernsey, and the Isle of Man will be considered as having the United Kingdom as one of their countries of origin. However, this exception does not apply to juristic persons. Accordingly, individuals, but not juristic persons, from one of the British overseas territories or Crown Dependencies, are entitled to priority under §44(d) or registration under §44(e) so long as the relevant foreign registration issued from a country that is party to a treaty or agreement with the United States. There is also an exception allowing an applicant from a United Kingdom territory to rely on a United Kingdom registration if the applicant has an address in the United Kingdom or in the Isle of Man. For more information about OCTs, see https://ec.europa.eu/europeaid/regions/octs_en .

In a §44 application or an amendment adding or substituting §44 as a basis, an eligible applicant may rely on an application filed in or registration issued by certain common offices of several states.  A “common office of several states” refers to an entity serving as the issuing office for trademark registrations for an established group of countries.  Examples include the Benelux Trademark Office, servicing Belgium, The Netherlands, and Luxembourg; and the African Intellectual Property Organization (“OAPI”), which issues registrations covering all member states (i.e., Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo).

An applicant may also claim the benefits of §44 based on an application for or registration of an EU trademark, if the applicant has a bona fide and effective industrial or commercial establishment in a country or state that is a member of the EU, formerly known as the European Community (EC) or European Economic Community (EEC).  See Appendix B for a list of these countries.

If an eligible applicant filed an application or obtained a registration in a country that is a member of the Paris Convention, Inter-American Convention, World Trade Organization, or European Union, the applicant can claim the benefits of either §44(d) or §44(e), if the applicant meets the requirements of those sections.  An eligible applicant may also file under either §44(e) or §44(d) based on an application filed or registration obtained in Taiwan.  On the other hand, if the applicant filed an application or obtained a registration in a country that is a member of the Buenos Aires Convention, the applicant may seek registration under §44(e), but may not obtain a priority filing date under §44(d).  See Appendix B for additional information.

In the case of agreements not covered in Appendix B , an applicant can establish its eligibility for the benefits of §44 by providing evidence of statutes or agreements establishing reciprocity between the United States and the relevant country.  Examining attorneys may also consult sources such as Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2d ed. 2008), available to USPTO employees in the Trademark Law Library, for information about the trademark laws of foreign countries.  Additional resources are listed in Appendix B.

See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).

1002.04 Establishing Country of Origin

To obtain registration under §44(e), the applicant must be the owner of a valid registration from the applicant’s country of origin.   Kallamni v. Khan, 101 USPQ2d 1864 (TTAB 2012) (finding that registrant’s shipment of product did not create a bona fide and effective commercial establishment in the European Union, that registrant had not established the European Union as his country of origin, and therefore registrant’s European Union registration could not serve as a basis for registration under §44(e)); TMEP §1002.01 .  To obtain a priority filing date under §44(d), the applicant’s country of origin must be a treaty country, but the foreign application that is the basis for the priority claim does not have to be filed in the applicant’s country of origin.   TMEP §1002.02 .  An applicant domiciled or organized in the United States may be entitled to registration under §44(e) if the applicant can also claim a country of origin other than the United States.   See TMEP §1002.05 .

Section §44(c) of the Trademark Act defines the applicant’s country of origin as “the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national.”  Under this definition, an applicant can have more than one country of origin.

If a §44 applicant is domiciled or incorporated in the country claimed, the examining attorney should presume that the country is the applicant’s country of origin, and should not issue any inquiry about the applicant’s country of origin.

If a §44(d) applicant is not currently domiciled, incorporated, or organized in a treaty country, the examining attorney must require the applicant to establish that it was domiciled, incorporated, or organized, or had a bona fide and effective industrial or commercial establishment, in a treaty country during the six-month priority period beginning at the date of filing of the foreign application. See TMEP §1002.02 .

If a §44(e) applicant is not currently domiciled, incorporated, or organized in the country that issued the foreign registration, the examining attorney must require the applicant to establish that the country was its country of origin as of the date of issuance of the foreign registration.  In this context, applicant is to be construed broadly, as defined in 15 U.S.C. §1127 ,  to embrace the legal representatives, predecessors, successors, and assigns of the original owner of the foreign application or registration. Thus, an applicant for registration in the United States who is the assignee of a foreign registration, but cannot establish that the country which issued the registration was its country of origin as of the date of the conveyance or is its country of origin as of the date of the filing of the U.S. application, may still claim the benefit of registration under §44(e). In such a case, the requirement that the "applicant" be the owner of a valid registration from its country of origin was perfected by applicant's predecessor in interest. However, under such circumstances, the applicant must establish that it is otherwise entitled to the benefits of Section 44(b), i.e., the applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration or must extend reciprocal registration rights to nationals of the United States. 15 U.S.C. §1126(b) .

Generally, a written statement by the applicant or the applicant’s attorney that the applicant has had a bona fide and effective industrial or commercial establishment in the relevant country during the six-month priority period beginning at the date of filing of the foreign application (for §44(d) applicants), or as of the date of issuance of the foreign registration (for §44(e) applicants), will be sufficient to establish that the country is the applicant’s country of origin.  This statement does not have to be verified. If a §44(d) applicant establishes its country of origin by submitting this statement, and later perfects its §44 basis by submitting a foreign registration issued by the same country, it is not necessary to require another statement as to the foreign registration.

If the application is otherwise eligible for approval for publication, or in condition to be allowed for registration on the Supplemental Register, the examining attorney may attempt to contact the applicant by telephone or e-mail to obtain the statement. If the examining attorney is unable to reach the applicant by telephone or e-mail, he or she must issue an Office action. If the applicant responds by telephone or e-mail, the examining attorney must issue an examiner’s amendment to enter the statement into the record.

If any evidence in the record contradicts the applicant’s assertion that it has a bona fide and effective industrial or commercial establishment in the relevant country, the examining attorney should require the applicant to set forth the specific circumstances which establish that the applicant maintains a bona fide and effective industrial or commercial establishment in the country.  Relevant factors include the presence of production facilities, business offices, and personnel.

The presence of an applicant’s wholly owned subsidiary in a country does not, by itself, establish country of origin.   See In re Aktiebolaget Electrolux , 182 USPQ 255 (TTAB 1974) .  The fact that the applicant is wholly owned by a foreign company does not establish country of origin.   See Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006) .

The sale of goods or services outside the United States through related companies or licensees does not create a bona fide commercial establishment and thus does not establish country of origin.   Id.;   see also Ex parte Blum, 138 USPQ 316 (Comm’r Pats. 1963) (country of origin cannot be established by relying on contractual relationships with a licensee in another country).

The United States, by definition, is not a country that has a treaty with the United States.  Therefore, the term “country of origin” in §44(b) and (c) means a country other than the United States.   In re Fisons Ltd., 197 USPQ 888 (TTAB 1978) ; see TMEP §1002.05 .

See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §§1002.02 and 1003.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).

1002.05 United States Applicants

Section 44(b) of the Trademark Act provides that, “Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section . . . .”

Section 44(i) of the Act provides that “[c]itizens or residents of the United States shall have the same benefits as are granted by this section to persons granted by this section to persons described in subsection [44](b) . . . .”  However, §44(i) does not provide an independent basis for a U.S. applicant to register a mark under §44(e).   See In re Pony Int’l Inc., 1 USPQ2d 1076 (Comm’r Pats. 1986).

The United States, by definition, is not a country that has a treaty with the United States.  Therefore, the term “country of origin” in §44(b) means some country other than the United States, and the term “person” in §44(b) means a person who can claim a country of origin other than the United States.   See In re Fisons Ltd., 197 USPQ 888 (TTAB 1978) .

An applicant domiciled in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States , even if the other country is not the applicant’s country of origin.   See In re ETA Sys. Inc., 2 USPQ2d 1367 (TTAB 1987) ; In re Int'l Barrier Corp. , 231 USPQ 310 (TTAB 1986) ; TMEP §1002.02 .

However, an applicant domiciled in the United States may not obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant’s country of origin.   See Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006) ; In re Int'l Barrier Corp., supra; In re Fisons, supra; TMEP §1002.01 .

For example, a Texas corporation may assert a priority claim under §44(d) based on ownership of an application in Mexico, regardless of whether Mexico is its country of origin.  However, this applicant must also assert a valid basis for registration ( see TMEP §1003.03 ).  The applicant may do so by asserting use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication.  The applicant cannot obtain registration in the United States under §44(e) unless the applicant establishes that Mexico is one of its countries of origin.

See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides for priority and/or registration based on ownership of a foreign registration.

See also TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §§1002.02 and 1003.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).

1003.01 The “First-Filed” Requirement

The application relied upon under §44(d) must be the applicant’s first application filed in any treaty country for the same mark and for the same goods or services.  The USPTO will presume that the application identified as the basis for the priority claim was the first filed, unless there is contradictory evidence in the record (e.g., in the application itself or submitted via a Letter of Protest that has been accepted; see TMEP §1715.01 regarding appropriate subjects to be raised in a letter of protest). If the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, the §44(d) priority claim may be based upon a subsequently filed application in the same foreign country or common office of several states. Generally, a written explanation by the applicant or the applicant’s attorney that the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, will be sufficient.

The requirement for the same goods or services means that the identification may not exceed the scope of the identification in the foreign application and must be different from the identification covered by any previous application or registration for the mark in a treaty country. See 37 C.F.R. §2.32(a)(6) ; TMEP §1402.01(b) . Thus, for example, if evidence in the record indicates that an applicant who owns a French registration for “coats, hats, and ties” subsequently files an EU trademark application with the European Union Intellectual Property Office for “coats, hats, ties, and shoes,” and then files a U.S. application within six months seeking a priority filing date for “coats, hats, ties, and shoes” based on the EU trademark application, the §44(d) priority claim would be valid only as to “shoes” because the EU trademark application was not the first filed in a treaty country for “coats, hats, and ties.” Note, however, that if the foreign application that formed the basis for the French registration was itself filed within six months of the filing date of the U.S. application, the French application may serve as a basis for priority for the “coats, hats, and ties” in the U.S. A single U.S. application may claim priority for different goods and services on the basis of different foreign applications for the same mark as long as all foreign applications claimed were the first-filed for the identified goods/services and were filed no earlier than six months prior to the U.S. application filing date.

If the examining attorney determines that the application relied on was not the first filed in any treaty country as to some or all of the goods/services, the examining attorney must advise the applicant that it is not entitled to priority as to the relevant goods/services.  If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect a basis for any goods/services not entitled to priority before the application can be approved for publication or for registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and TMEP §806.03 regarding amendment of the basis.  

If the applicant is not entitled to priority as to any goods/services, the examining attorney must ensure that the priority claim is deleted from the Trademark database. If the applicant is entitled to priority as to some, but not all, of the goods/services, the examining attorney must ensure that the identification in the Trademark database indicates those goods/services that have priority. See TMEP §806.02(a) . The examining attorney must also conduct a new search of USPTO records for conflicting marks as to any goods/services not entitled to priority.  

1003.02 Priority Claim Must Be Filed Within Six Months of Foreign Filing

An applicant must file a claim of priority within six months afterthe filing date of the foreign application.   15 U.S.C. §1126(d)(1) ; 37 C.F.R. §§2.34(a)(4)(i) , 2.35(b)(5) ; Paris Convention Article 4(C)(3).  The applicant can submit the priority claim after the filing date of the U.S. application, as long as the claim of priority is submitted within six months of the foreign filing and the claimed priority date is earlier than the filing date of the U.S. application.

If an applicant claims priority under §44(d), but does not specify the filing date of the foreign application, the examining attorney must require that the applicant specify the date of the foreign filing.

If the applicant submits a claim of priority more than six months after the date of the foreign filing, the examining attorney must advise the applicant that it is not entitled to priority.   See 15 U.S.C. §1126(d) ; 37 C.F.R. §§2.34(a)(4)(i) , 2.35(b)(5) .  If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect an acceptable basis before the application can be approved for publication or for registration on the Supplemental Register.  See TMEP §1003.03 regarding registration basis for §44 applications and TMEP §806.03 regarding amendment of the basis.  The examining attorney should ensure that the priority claim is deleted from the Trademark database, and should conduct a new search of USPTO records for conflicting marks.  

If the priority period ends on a Saturday, Sunday, or Federal holiday within the District of Columbia, the priority claim may be filed no later than the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia.  Paris Convention Article 4(C)(3); 35 U.S.C. §21(b) ; 37 C.F.R. §2.196 .

1003.03 Basis for Registration Required

Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration.  Before an application may be approved for publication, or allowed for registration on the Supplemental Register, the applicant must establish a basis for registration under §1(a), §1(b), or §44(e) of the Act.   See 37 C.F.R. §2.34(a)(4)(iii) .  See TMEP §1002.02 regarding applications that are entitled to a priority filing date under §44(d), but are not entitled to registration under §44(e) because the foreign application was filed in a treaty country that is not the applicant’s country of origin.

An applicant may claim more than one basis for registration (i.e., §44(e) in addition to §1(a) or §1(b)). If the applicant claims a §1(b) basis, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ) before the mark can be registered.  See TMEP §806.01(b) regarding the requirements for a §1(b) basis and TMEP §§1004-1004.02 regarding the requirements for registration under §44(e).

A §44(d) applicant may not assert a basis under §66(a) of the Trademark Act, based on an extension of protection of an international registration to the United States.   See 37 C.F.R. §§2.34(b) , 2.35(a) .

1003.04 Suspension Awaiting a Foreign Registration

1003.05 Section 44(d) and Priority for Publication

To determine priority for publication under 37 C.F.R. §2.83 , an application filed in the United States under §44(d) will be treated as if it were filed in the United States on the same date as the filing in the foreign country.  The §44(d) application will receive priority over any application filed after the §44(d) applicant’s priority filing date that might otherwise be a possible bar to registration under §2(d) of the Trademark Act due to a likelihood of confusion.  See TMEP §§1208 et seq. regarding conflicting marks in pending applications.

In some cases, another U.S. application filed after the §44(d) applicant’s priority date may proceed to publication or registration because the §44(d) applicant had not yet filed in the United States when the examining attorney searched USPTO records for conflicting marks.  If the USPTO learns that a §44(d) application is entitled to priority over another pending application before the other mark registers, the USPTO will take appropriate action to give the §44(d) application the priority to which it is entitled. The §44(d) applicant may bring the priority-date issue to the USPTO’s attention by submitting a letter of protest in the other pending application. See TMEP §1715 regarding letters of protest.

If an examining attorney discovers a conflicting application entitled to priority under §44(d) after taking action in a case, the examining attorney must issue a supplemental action correcting the situation.  If the mark has been published, the examining attorney must request jurisdiction before issuing the action, unless a notice of allowance has issued.  See TMEP §§1504.01 and 1504.04(a) regarding the examining attorney’s jurisdiction.

However, if the conflicting mark has already registered, the USPTO does not act to cancel the registration sua sponte.  The §44(d) applicant may seek to cancel the registration by filing a petition for cancellation with the Trademark Trial and Appeal Board.

1003.06 Applicants May File Under both §§44(d) and 44(e)

In some cases, a §44 applicant may have already received, before filing in the USPTO, a foreign registration as a result of the same foreign application upon which the applicant relies for priority under §44(d).  This may occur in countries that do not examine applications prior to registration.  In this situation, the applicant may file under both §44(d) and §44(e).

An applicant may also claim priority under §44(d) based upon a foreign application, and proceed to registration under §44(e) based upon a different foreign registration.  Both foreign countries must be parties to a treaty or agreement with the United States and the foreign registration must be from a country of origin of the applicant.  If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis, but may require republication.   See TMEP §1004.02 .

1003.07 Application May Be Based on More than One Foreign Application

An applicant may file an application in the United States based on more than one foreign application for different goods or services, or for different classes, if the applicant meets the requirements of §44(d) with respect to each foreign application on which the U.S. application is based.  The applicant must specify which goods or services, or which classes, are covered by which foreign application.  The mark in each foreign application must be the same mark for which registration is sought in the U.S. application.

1003.08 Abandonment of the Foreign Application

If the foreign application relied on under §44(d) is abandoned during the prosecution of the U.S. application, the applicant may amend the application to rely on another basis.   See TMEP §806.03 .  If the applicant met the requirements of §44(d) on the filing date of the U.S. application, the applicant will retain the priority filing date even if the foreign application is abandoned.   See 37 C.F.R. §2.35(b)(4) .

In this situation, the USPTO will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date, unless there is contradictory evidence in the record.   See 37 C.F.R. §2.35(b)(3) ; TMEP §806.03(h) .

1004.01 Copy of Foreign Registration Required

Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e) , requires “a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant.”  If a copy of the foreign registration is not included with the application as filed, the examining attorney must require submission of a copy of the foreign registration in the first Office action.   See 37 C.F.R. §2.34(a)(3)(ii) . The copy must show the name of the owner, the mark, and the goods or services for which the mark is registered.

If the applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin.  A photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect, unless accompanied by a certification from the issuing office.

An English translation of a registration from the country of origin by itself is not an acceptable “copy” of the foreign registration.  A certification or copy of the registration as issued by the intellectual property office of the country of origin is required, along with an English translation.   See 37 C.F.R. §2.34(a)(3)(ii) .  See TMEP §1004.01(b) regarding translation of foreign registrations.

If an applicant files more than one application in the United States based on the same foreign registration, the applicant must file a copy of the foreign registration (and its English translation, if applicable), in each of the U.S. applications.   See 37 C.F.R. §2.193(g) .

In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster).  However, the examining attorney may suspend the application pending receipt of proof of renewal of the foreign registration ( see TMEP §1004.01(a)) .

1004.02 Application May Be Based on More than One Foreign Registration

A U.S. application may be based on more than one foreign registration.  The applicant must meet all requirements of the Trademark Act and rules for each foreign registration upon which the U.S. application is based, and must specify which goods/services are covered by which foreign registration.

If a §44 applicant amends an application to rely on a different foreign registration after publication, this is not considered a change in basis.  However, if the amendment is acceptable, the application must be republished.  See TMEP §1505.03(a) regarding post-publication amendments that require republication.

1011.01 Substantially Exact Representation of Mark in Foreign Registration

The drawing of the mark must be “a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the country of origin of the applicant.”   37 C.F.R. §2.51(c) ; TMEP §807.12(b) .

The “substantially exact representation” standard is construed narrowly.  Only slight, inconsequential variations between the mark in the U.S. application and the mark shown in the foreign registration are permitted.   In re Hacot-Colombier , 105 F.3d 616, 618, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995) ; United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd. , 9 USPQ2d 1481, 1484 (TTAB 1988).  For example, non-material informational matter such as net weight or contents may be deleted.  Beyond such limited exceptions, however, any difference between the mark on the drawing and the mark in the foreign registration requires the examining attorney to refuse registration.   In re Hacot-Colombier , 105 F.3d at 619, 41 USPQ2d at 1525.

If the foreign registration shows a series of marks, the mark on the drawing in the U.S. application must be a substantially exact representation of one of the marks depicted in the foreign registration. See TMEP §1011.02 regarding only one mark per application.

The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act.  In United Rum Merchants, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44 applications represent an exception to the use requirements of the Act, and that this exception should be construed narrowly to ensure that a foreign applicant cannot obtain a registration in the United States of matter that could not have been registered in the foreign country.   United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d at 1483-84.

If the mark in the foreign registration is in standard characters, the mark in the U.S. application must also be in standard characters.  If the foreign registration certificate does not indicate that the mark is in standard characters (or the legal equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters.  The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the U.S. application.  See TMEP §807.03(f) for further information.  See also Appendix E, which lists countries that register marks in standard characters or the equivalent.

Likewise, if the mark in the foreign registration is in special form, the drawing of the mark in the U.S. application must appear in the same special form.  If the mark in the foreign registration shows color, the applicant must submit a color photocopy of the foreign registration.  All claims of color made in the foreign registration must also be made in the U.S. application.  The applicant must also comply with all requirements for a color drawing of the mark.  See 37 C.F.R. §2.52(b)(1) and TMEP §§807.07 et seq. regarding the requirements for claiming color.

If the foreign registration is not issued in color, the examining attorney may require evidence to establish that a colored mark in a U.S. application is a substantially exact representation of the mark in the foreign registration. For example, the examining attorney may require evidence of the foreign country’s procedure for designating color when the foreign registration does not reflect the colors shown in the U.S. application.

If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes a claim of color(s) as a feature of the mark.  The applicant must either:  (1) submit an affirmative statement that color is claimed as a feature of the mark in the foreign registration; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration.  If the examining attorney determines that the color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing.   See TMEP §807.07(b) .

The mark on the drawing in the U.S. application may not be a translation or transliteration of the mark in the foreign registration.

If the U.S. application is based on both a foreign registration and use in commerce, the mark on the drawing in the U.S. application must not only be a substantially exact representation of the mark in the foreign registration, but also may not differ in a material way from the mark shown on the specimen(s) of record.   See TMEP §§807.12(b) , 807.14 et seq.

1011.02 One Mark Per Application

If the foreign application or registration covers a series of distinct marks, the applicant must file separate applications in the United States to register each of the marks the applicant wishes to register in the United States.  For example, some countries permit registration of several versions of a mark in a single application.  In the United States, separate applications are required.  The drawing in the U.S. application must show only one mark, which must be a substantially exact representation of one of the marks in the foreign registration.   37 C.F.R. §2.52 ; TMEP §§807.01 , 807.12(b) , 1011.01 .

1011.03 Amendment of Drawing

Section 44 applicants often try to amend the mark in the U.S. application to overcome an objection that the mark in the drawing does not agree with the mark in the foreign registration.  Amendments to drawings in §44 applications are governed by 37 C.F.R. §2.72(c) .  An applicant cannot amend the drawing in the U.S. application to conform to the mark in the foreign registration if the amendment would result in a material alteration of the mark on the drawing submitted with the original application in the United States.   In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997); In re Wine Soc'y of Am. Inc. , 12 USPQ2d 1139 (TTAB 1989) .  Thus, when a §44 applicant proposes to amend its drawing, the examining attorney must consider:  (1) whether the proposed amendment of the drawing would result in a material alteration of the mark on the original drawing; and (2) whether the proposed amendment would result in a mark that is a substantially exact representation of the mark in the foreign registration.  In  In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995), the Trademark Trial and Appeal Board held that the mark “GRAN VINO MALAGA LARIOS” and design on the drawing originally filed with the U.S. application was not a substantially exact representation of the mark “VINO DE MALAGA LARIOS” with a similar design in the foreign registration; however, the Board found that amendment of the drawing to conform to the foreign registration was nota material alteration within the meaning of 37 C.F.R. §2.72 .  The Board noted that “[t]he material alteration test . . . is not quite as rigorous as the substantially exact representation standard and thus allows for a bit more leeway or flexibility with respect to . . . amendment of the drawing . . . .”  In re Larios S.A., 35 USPQ2d at 1217.  See TMEP §§807.14 et seq. regarding material alteration.

1011.04 Drawings and Descriptions of Three-Dimensional and Non-Visual Marks

If the foreign application or registration depicts several views of a three-dimensional mark, the examining attorney must require the applicant to comply with 37 C.F.R. §2.52(b)(2) , and submit an acceptable drawing that depicts a single rendition of the mark.  See generally TMEP §§807 et seq. regarding drawings.  In the alternative, the applicant may petition the Director, pursuant to 37 C.F.R. §2.146(a)(5) , to waive the requirement and accept a drawing featuring multiple views of the mark.  See TMEP Chapter 1700 regarding petitions to the Director.

In all such cases, the applicant must indicate that the mark is three-dimensional.   37 C.F.R. §2.52(b)(2) ; TMEP §807.10 .  If necessary to adequately depict the commercial impression of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears.  The applicant must also use broken lines to show matter not claimed as part of the mark.  For any drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must include a written description of the mark and explain the purpose of the broken lines, e.g., by indicating that the matter shown by the broken lines is not a part of the mark and that it serves only to show the position of the mark.   37 C.F.R. §2.52(b)(4) ; TMEP §807.08 .

With respect to sound, scent, and other non-visual marks, an applicant is not required to submit a drawing, but must submit a detailed description of the mark.   TMEP §807.09 .  If the foreign registration includes a drawing, such as a musical staff depicting the notes of which a sound mark is comprised, the U.S. application need not include such a drawing.  As the drawing of the mark must be a substantially exact representation of the mark in the foreign registration, and the description of the mark defines the mark sought to be registered in a non-visual mark, the description of the mark in the U.S. application must be substantially comparable to any description of the mark in the foreign application or registration.   37 C.F.R. §§2.51(c) , 2.52(e) .