1306.08 Registration of Certification Mark on Basis of Foreign Registration
A certification mark may be registered in the United States under §44 of the Trademark Act, on the basis of a foreign registration. However, whether a particular foreign registration is acceptable as the basis for a United States registration depends on the scope of the foreign registration.
A person may not obtain a registration in the United States that is broader in scope than the foreign registration on which the United States application is based. See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972); TMEP §1402.01(b). Therefore, a registration as a certification mark in the United States may not be based on a foreign registration that is actually a trademark registration, i.e., a registration that is based on the registrant’s placement of the mark on his or her own goods as a trademark. The scope of the registration, i.e., the nature of the registration right, would not be the same.
The scope and nature of the registration right is not always immediately apparent from a foreign registration certificate. Foreign registration certificates are not always labeled as pertaining to a trademark, service mark, collective mark, or certification mark and, when they are labeled, the significance of the term is not always clear. For example, the designation "collective" represents a different concept in some foreign countries than it does in the United States. Moreover, while a certificate printed on a standardized form may be headed with the designation "trademark," the body of the certificate might contain language to the contrary.
Since certification is an exception in the larger world of trademarks, an indication of certification in the registration certificate would normally represent a conscious decision that a certification situation exists. Therefore, if a foreign registration certificate has a heading that designates the mark as a certification mark, or if the body of the foreign certificate contains language indicating that the registration is for certification, the foreign registration normally may be accepted to support registration in the United States as a certification mark.
Whenever there is ambiguity about the scope or nature of the foreign registration, or whenever the examining attorney believes that the foreign certificate may not reflect the actual registration right, the examining attorney should inquire regarding the basis of the foreign registration, pursuant to 37 C.F.R. 2.61(b).