1303.01(a)(iv)    Foreign Registration – §44(e)

Under 15 U.S.C. §§1054,  1126(e), and 37 C.F.R. §2.44(a)(4)(iii), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:

  • (1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. If the foreign registration or other certification is not in English, the applicant must provide a translation of the document. If the record indicates that the foreign registration will expire before the U.S. registration will issue, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a proof of renewal from the applicant’s country of origin to establish that the foreign registration has been renewed and will be in full force and effect at the time the U.S. registration will issue. If the proof of renewal is not in the English language, the applicant must submit a translation (37 C.F.R. §2.44(a)(4)(iii)(A); TMEP §§1004.01, 1004.01(b));
  • (2) The applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true (37 C.F.R. §2.44(a)(4)(iii)(B); see 15 U.S.C. §§1051(b)(3)(B),  1054). This allegation is required even if use in commerce is asserted in the application ( TMEP §806.02(e)). See TMEP §1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act; and
  • (3) The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law (15 U.S.C.  §1026(b), see TMEP § 1002.03).

If the applicant does not submit a certification or a certified copy of the registration from its country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin. A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.

The scope of the goods/services covered by the §44 basis in the United States application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.44(a)(2)(iii); TMEP §1402.01(b).

An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished. TMEP §1004.02. See TMEP §806.03 regarding amendments to add or substitute a basis.

See TMEP §§1004–1004.02 for further information about §44(e) applications.

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.