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 United States applicant to register a mark under §44(e).  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.  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 Systems Inc., 2 USPQ2d 1367 (TTAB 1987), dec. withdrawn on other grounds (TTAB, November 28, 1988); In re International Barrier Corp., 231 USPQ 310 (TTAB 1986).  See 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 International Barrier Corp., supra; In re Fisons, supra.  See 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).