1303.01(a)(iv)(A) Scope of Foreign Registration
A registration as a collective trademark or collective service mark in the United States may not be based on a foreign registration that is actually a trademark registration. See In re Löwenbräu München, 175 USPQ 178 (TTAB 1972) (noting that the U.S. registration cannot exceed the breadth or scope of the foreign registration on which it is based); TMEP §1402.01(b). 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 is not always immediately apparent from a foreign registration certificate. Foreign registration certificates may not always clearly identify whether the mark is a trademark, service mark, collective mark, or certification mark and even when they indicate the type, the significance of the term used for the type 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.
If a foreign registration certificate has a heading that designates the mark as a collective trademark or collective service mark, or if the body of the foreign certificate contains language indicating that the registration is for a collective trademark or collective service mark, the foreign registration normally may be accepted to support registration in the United States as a collective trademark or collective service mark.
If a foreign registration certificate has a heading that designates the mark as a collective mark, or if the body of the foreign certificate contains language indicating that the registration is for a collective mark, this could indicate that the foreign registration is for a collective trademark, collective service mark, or collective membership mark. See TMEP §1302. In such a situation, the examining attorney must review the foreign registration to determine if there is a reference to goods or services such that the registration is for a collective trademark or collective service mark, or a reference indicating membership only such that the registration is for a collective membership mark. Id.
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).