1005 Ownership of the Foreign Application or Registration
Section 44 Claimed in Original Application
If an applicant claims §44 as the filing basis in the original United States application, or if the applicant omits the basis from the original United States application and subsequently claims §44 as the basis, the applicant must be the owner of the foreign application or registration on the filing date of the United States application. See In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991). If the foreign application or registration identifies a party other than the §44 applicant as the owner, the examining attorney must require the applicant to establish that the applicant was the owner of the foreign application or registration on the date of filing in the United States.
Proof of ownership may consist of a copy of an assignment document recorded in the foreign country, or a statement from the agency administering the trademark register in the foreign country establishing that the applicant was the owner of the foreign application or registration as of the United States application filing date. Other forms of proof may also be acceptable. If the transfer of ownership took place before the United States application filing date, the §44 basis will be considered valid, even if the change in ownership was not yet recorded in the foreign country on the United States application filing date.
If the applicant was not the owner of the foreign application or registration on the United States application filing date, the examining attorney must refuse registration under §44. 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.
If a §44(d) applicant was not the owner of the foreign application on the United States application filing date, the examining attorney should advise the applicant that it is not entitled to priority, ensure that the priority claim is deleted from the TRAM database, and conduct a new search of USPTO records for conflicting marks. TMEP §1002.02.
Section 44 Added to or Substituted for Valid Section 1 Basis
If an application is properly filed based on §1(a) or §1(b), and the applicant later amends the application to add or substitute §44 as a basis, the applicant must be the owner of the foreign application or registration as of the filing date of the amendment adding or substituting §44 as a basis for registration. See TMEP §§806.03 et seq. regarding amendments to change the basis.
If the applicant owned the foreign application or registration on the filing date of the amendment, but did not own the foreign application or registration on the filing date of the United States application, the applicant will retain the original filing date in the United States, as long as there was a continuing valid basis since the application filing date. 37 C.F.R. §2.35(b)(3); TMEP §806.03(h).
If the foreign application or registration identifies a party other than the §44 applicant as the owner, the examining attorney will require the applicant to establish that the applicant was the owner of the foreign application or registration on the filing date of the amendment adding or substituting §44 as a basis. If the applicant was not the owner of the foreign application or registration on the filing date of the amendment, the examining attorney must refuse registration under §44.
See TMEP §1006 regarding assignment of §44 applications.