1004 Applications Based on Foreign Registrations Under §44(e)

If an eligible applicant ( see TMEP §1002.01) owns a valid registration from the applicant’s country of origin, the applicant may base its U.S. application on that foreign registration under §44(e).

A §44(e) application for a trademark or service mark must meet the following requirements:

(1) The applicant must be the owner of a valid registration in the applicant’s country of origin. 15 U.S.C. §1126(c), (e). See TMEP §1002.01 and §1002.04 regarding country of origin.
(2) 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); see TMEP §§1002.03, 1002.04, 1002.05.
(3) 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. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.
(4) The applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(i). If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.34(a)(3)(i).
(5) The scope of the identification covered by the §44(e) basis may not exceed the scope of the identification in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).

For the requirements under §44(e) for collective and certification marks, see TMEP §1303.01(a)(iv) for collective trademark or collective service mark applications, TMEP §1304.02(a)(iv) for collective membership mark applications, and TMEP §1306.02(a)(iv) for certification mark applications.

If the applicant is not domiciled in the United States, the applicant is encouraged to designate a domestic representative, i.e., a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §1051(e); TMEP §610. This can be done through TEAS, at http://www.uspto.gov.

An applicant may not file an application under §44(e), or amend an application to add or substitute a §44(e) basis, before the registration in the applicant’s country of origin has issued. An applicant can file under §44(d) within six months after the filing date of an application in the applicant’s country of origin ( see TMEP §§1003 et seq.). However, once this six-month priority period has passed, an applicant cannot file an application in the United States based on a pending foreign application.

1004.01 Copy of Foreign Registration Required

Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e), requires "a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant." If a copy of the foreign registration is not included with the application as filed, the examining attorney must require submission of a copy of the foreign registration in the first Office action. See 37 C.F.R. §2.34(a)(3)(ii). The copy must show the name of the owner, the mark, and the goods or services for which the mark is registered.

If the applicant submits a copy of the foreign registration, it must be a copy 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 the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect, unless accompanied by a certification from the issuing office.

An English translation of a registration from the country of origin by itself is not an acceptable "copy" of the foreign registration. A certification or copy of the registration as issued by the intellectual property office of the country of origin is required, along with an English translation. See 37 C.F.R. §2.34(a)(3)(ii). See TMEP §1004.01(b) regarding translation of foreign registrations.

If an applicant files more than one application in the United States based on the same foreign registration, the applicant must file a copy of the foreign registration (and its English translation, if applicable), in each of the U.S. applications. See 37 C.F.R. §2.193(g).

In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). However, the examining attorney may suspend the application pending receipt of proof of renewal of the foreign registration ( see TMEP §1004.01(a)).

1004.01(a) Status of the Foreign Registration

The foreign registration must be in force at the time the United States issues the registration based on that foreign registration. In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784 (TTAB 2003) ; Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792 (TTAB 1993) ; Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36 (TTAB 1986). Appendix B of this manual lists the terms of registration in various foreign countries.

If the record indicates that the foreign registration has expired or will expire before the U.S. registration will issue, the examining attorney must require that an applicant submit a certificate of renewal or other certification from the intellectual property office of the foreign country, or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States, along with an English translation. 37 C.F.R. §2.34(a)(3)(iii). See TMEP §1004.01(b) regarding translation of foreign registrations and renewal documents. A photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the registration has been renewed in that country and is in full force and effect, unless accompanied by a certification from the issuing office. Currently, the only exception is for renewals of Singapore registrations. As of January 1, 2009, Singapore ceased issuing certificates confirming that a registration has been renewed. Therefore, a printout from the Singapore intellectual property office website showing the extended expiration date of the foreign registration is acceptable as proof of renewal.

Generally, the examining attorney must require proof of renewal if it appears that the foreign registration will expire within six months after the date of approval for publication. If the applicant states that renewal is pending in the foreign country, the examining attorney should suspend the application pending receipt of proof of renewal.

If an applicant submits a certified copy or certification of the foreign registration that is certified by the foreign government agency who issued the foreign registration, the examining attorney should inquire concerning renewal only if the certified copy of the foreign registration indicates that the registration will expire after the date on which the foreign government agency issued the certified copy or certification of the foreign registration. For example, if a certified copy of a foreign registration was issued by the trademark agency in the foreign country on January 5, 2009, and the certified copy indicates that the registration expired on June 1, 2008, no inquiry is necessary. The USPTO presumes that the foreign country would not have issued a certified copy of the registration unless the registration had been renewed. This applies only to a certified copy or certification issued by the foreign trademark agency. If the copy of the registration is not certified by the foreign trademark agency, and the record indicates that the foreign registration will expire before the U.S. registration will issue, the examining attorney must require that the applicant submit a copy of the foreign registration showing that the registration has been renewed.

If the examining attorney determines that the foreign registration is not in force, the examining attorney will refuse registration under §44(e) of the Trademark Act, 15 U.S.C. §1126(e). The applicant may amend the application to claim another basis. See TMEP §806.03 regarding amendments to the basis.

For information about recent changes in the term of registration in a foreign country, examining attorneys may consult resources such as Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2d ed. 2008), available to USPTO employees in the Trademark Law Library. Additional resources are listed in Appendix B.

1004.01(b) Translation of the Foreign Registration or Renewal Document

If the foreign registration, certificate of renewal, or other certification of renewal from the intellectual property office of the foreign country is not in English, the applicant must provide a translation. 37 C.F.R. §2.34(a)(3)(ii)-(iii). The translator should sign the translation, but does not have to swear to the translation.

1004.02 Application May Be Based on More than One Foreign Registration

A U.S. application may be based on more than one foreign registration. The applicant must meet all requirements of the Trademark Act and rules for each foreign registration upon which the U.S. application is based, and must specify which goods/services are covered by which foreign registration.

If a §44 applicant amends an application to rely on a different foreign registration after publication, this is not considered a change in basis. However, if the amendment is acceptable, the application must be republished. See TMEP §1505.03(a) regarding post-publication amendments that require republication.