1002    Eligible Applicants Under §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) and (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).  SeeSARL Corexco v. Webid Consulting Ltd., ___ USPQ2d ____, Cancellation No. 92056456 (TTAB Mar. 27, 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) and (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 United States 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 et seq. 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 and 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 United States 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 and 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.

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 a Community Trade Mark, 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, 2nd 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 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 domiciled, incorporated, or organized in the country that issued the foreign registration, the examining attorney must require the applicant to establish that the country is 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 is its country of origin prior to the assignment, or to the filing of the United States application, may still claim the benefit of registration under §44(e) because the requirement that the applicant be the owner of a valid registration from the applicant’s country of origin was perfected by its predecessor in interest.

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.  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.  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 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).