TMEP 806.02(f): Section 44(d) Combined With Other Bases

October 2017 Edition of the TMEP

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806.02(f)    Section 44(d) Combined With Other Bases

If an applicant properly claims priority under §44(d), 15 U.S.C. §1126(d),  in addition to a §1 basis, the applicant may elect not to perfect the §44(e) basis (based on the foreign registration that will issue from the application on which the applicant relies for priority) and still retain the priority filing date. 37 C.F.R. §2.35(b)(3), (b)(4). If an applicant who elects not to perfect the §44(e) basis later wishes to add or substitute §44(e) as a basis after the mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2); see TMEP §806.03(j).

The examining attorney must advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquire whether the applicant wishes to retain §44(e) as a second basis for registration.  See TMEP §806.04(b) regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis, and TMEP §1003.04(b) regarding the procedures to follow when an applicant claims priority under §44(d) in addition to another basis.