1003.04    Suspension Awaiting a Foreign Registration

1003.04(a)    Applications Based Solely on Section 44

In a §44(d) application filed via TEAS, the applicant is asked to specifically indicate that it does not intend to rely on §44(e) as a basis for registration, but wishes only to assert a valid claim of priority. If the applicant does not do so, an intent to rely on §44(e) is presumed and, when filed, the application will include a statement that the applicant intends to rely on §44(e) as a basis for registration.

If, on initial examination of the application, there are no refusals, requirements, or prior pending applications, the examining attorney will suspend action on the application pending receipt of the foreign registration.  The suspension notice must include a search clause (see TMEP §704.02).

If, on initial examination, the examining attorney issues any refusals or other requirements, the Office action must also include a requirement that the applicant submit the foreign registration when it becomes available. Depending upon the applicant’s response, the examining attorney will take appropriate action to place the application in condition for approval for publication, allowance for registration on the Supplemental Register, or final action on all other issues, and will then suspend further action pending receipt of the foreign registration. In the notice of suspension, the examining attorney must reference any continued refusals or requirements. See TMEP §716.01.

If, on initial examination, the only other issue is a prior pending application, the examining attorney will suspend action on the application pending receipt of the foreign registration and resolution of the prior pending application. The suspension notice must include a search clause (see TMEP §704.02). If the foreign registration is submitted while the prior pending application is pending, the application will be re-suspended and the suspension letter will state that the foreign registration has been received but will not be examined until the prior pending application either abandons or registers. If the prior pending application abandons before the applicant submits the foreign registration, the examining attorney will re-suspend the application pending receipt of the foreign registration. The suspension letter must state that the prior pending application has abandoned and no longer poses a potential bar to registration. However, if the prior pending application registers before the foreign registration is submitted, the examining attorney will issue a non-final Office action with a §2(d) refusal and a requirement that the applicant submit the foreign registration when it becomes available. If the applicant responds, but the foreign registration cannot yet be provided, the application will be re-suspended. The suspension notice must indicate whether the §2(d) refusal is continued or withdrawn. See TMEP §716.01.

If the TEAS application indicates that the applicant is not relying on §44(e) and no other basis for registration is claimed, the examining attorney must inquire since the application lacks a basis for registration. If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, this inquiry may be made via telephone or email. The following actions should be taken based on the applicant’s response to the inquiry:

  • If the applicant responds that it intends to rely on §44(e) as the basis, the examining attorney must enter a Note to the File in the record and suspend the application pending receipt of the foreign registration. The suspension letter must include a search clause. See TMEP §§704.02, 1003.04(a).
  • If the applicant responds that it intends to rely solely on §1(b) as the basis, the examining attorney must issue an examiner’s amendment so specifying.
  • If the applicant responds that it intends to rely solely on §1(a) and the application does not include a specimen, dates of use, and/or the proper declaration, the examining attorney must issue a priority action specifying what actions the applicant must take. See TMEP §708.01.

If, however, there are other refusals or requirements, or the applicant cannot be reached by telephone or email, the examining attorney must issue an Office action that includes the inquiry regarding whether the applicant intends to rely on §44(e) as a registration basis and note that, if so, the foreign registration is required when it becomes available.

Permitted paper filing. If a permitted paper §44(d) application (see TMEP §301.01) is silent as to whether the applicant intends to rely on §44(e), the USPTO will presume that the applicant intends to rely on §44(e) as a basis for registration and follow the same procedures as for TEAS applications.

1003.04(b)    Multiple-Basis Applications

If an applicant properly claims §44(d) as a basis for receipt of a priority filing date and asserts §1 as a second basis, the applicant may elect not to perfect the §44 basis and still retain the priority filing date.  37 C.F.R. §2.35(b)(3)-(4).   If the TEAS application indicates that the applicant is relying on §44(e) as a basis for registration, the examining attorney must follow the procedures in TMEP §1003.04(a) with respect to the §44(e) basis. If the application indicates that the applicant is not relying on §44(e) as an additional basis for registration and is only asserting §44(d) to receive a priority filing date, the examining attorney must ensure that the Trademark database is updated accordingly. See TMEP §806.02(f) and 806.03(j) regarding the addition or substitution of a §44(e) basis after a mark has been published for opposition.

Permitted paper filing. When a permitted paper application (see TMEP §301.01) is silent as to whether the applicant intends to rely on §44(e) as an additional basis for registration, the examining attorney must inquire as to whether the applicant intends to rely on the §44(e) basis. If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, this inquiry may be made via telephone or email.  If the applicant intends to perfect the §44 basis, the examining attorney must enter a Note to the File in the record and suspend the application pending receipt of the foreign registration.  If the applicant does not wish to perfect the §44 basis, the examining attorney must issue an examiner’s amendment to this effect.  If the applicant cannot be reached by telephone or email, the examining attorney must enter a Note to the File in the record indicating the unsuccessful attempt to contact the applicant and suspend action on the application pending receipt of the foreign registration. The suspension notice must include a search clause (see TMEP §704.02).

If it is necessary to issue an Office action for a paper application that does not specify whether applicant intends to rely on §44(e) as an additional basis, the examining attorney must inquire as to whether the applicant intends to perfect §44 as a second basis for registration and note that, if so, the foreign registration is required when it becomes available. If the response indicates that the applicant is not relying on §44(e) as an additional basis for registration, the examining attorney will approve the application for publication or allowance on the Supplemental Register, or will issue a final action, as appropriate. If the response indicates that the applicant intends to rely on §44(e) as a second basis, or fails to indicate whether the applicant intends to perfect the §44 basis, the examining attorney will suspend further action pending submission of the foreign registration and, if appropriate, resolution of the prior pending application. In the notice of suspension, the examining attorney must reference any refusals or requirements that are continued. See TMEP §716.01.  

See TMEP §1003.04(a) with respect to suspension procedures when there is a prior pending application.

1003.04(c)      Periodic Inquiries Issued as to Status of Foreign Application

Examining attorneys must issue inquiries as to the status of the foreign application in applications that have been suspended for more than six months. See TMEP §716.05.  If the applicant does not respond or request an extension of time to respond to this inquiry within three months of the issuance date, the application will be abandoned for failure to respond to an Office action. See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a); TMEP §718.02. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.

If the foreign application has not yet matured to registration, the applicant should submit a statement to that effect. This statement may be submitted using the TEAS Response to Suspension Inquiry or Letter of Suspension form in a formal response to the suspension inquiry or by timely notifying the examining attorney in an informal communication by telephone or email. In such case, the examining attorney will issue a new notice of suspension. If the statement is provided through informal communications, the examining attorney must also enter a Note to the File in the record that indicates the applicant’s response. See TMEP §709.05.

If the applicant states that the foreign registration has issued, but does not provide a copy of the certificate, the examining attorney must issue an Office action requiring a copy, unless the applicant has established that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). See 15 U.S.C. §1126(e);  37 C.F.R. §2.34(a)(3)(ii); TMEP § §716.02(b), 1004.01.