TMEP 1004: Applications Based on Foreign Registrations Under §44(e)
October 2017 Edition of the TMEP
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1004 Applications Based on Foreign Registrations Under §44(e)
If an eligible applicant ( see TMEP §1002.01) owns a valid registration from the applicant’s country of origin, the applicant may base its U.S. application on that foreign registration under §44(e).
A §44(e) application for a trademark or service mark must meet the following requirements:
- (1) 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 §1002.01 and §1002.04 regarding country of origin.
- (2) 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); see TMEP §§1002.03, 1002.04, 1002.05.
- (3) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.
- (4) The applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(i). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(3)(i).
- (5) The scope of the identification covered by the §44(e) basis may not exceed the scope of the identification in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
For the requirements under §44(e) for collective and certification marks, see TMEP §1303.01(a)(iv) for collective trademark or collective service mark applications, TMEP §1304.02(a)(iv) for collective membership mark applications, and TMEP §1306.02(a)(iv) for certification mark applications.
If the applicant is not domiciled in the United States, the applicant is encouraged to designate a domestic representative, i.e., a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §1051(e); TMEP §610. This can be done through TEAS, at http://www.uspto.gov.
An applicant may not file an application under §44(e), or amend an application to add or substitute a §44(e) basis, before the registration in the applicant’s country of origin has issued. An applicant can file under §44(d) within six months after the filing date of an application in the applicant’s country of origin ( see TMEP §§1003 et seq.). However, once this six-month priority period has passed, an applicant cannot file an application in the United States based on a pending foreign application.