T.M.E.P. § 1002.04
Establishing Country of Origin
Executive summary:
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1002.04 Establishing Country of Origin
To obtain registration under §44(e), the applicant must be the owner of a valid registration from the applicant's country of origin. TMEP §1002.01. To obtain a priority filing date under §44(d), the applicant's country of origin must be a treaty country, but the foreign application that is the basis for the priority claim does not have to be filed in the applicant's country of origin. TMEP §1002.02.
Section §44(c) of the Trademark Act defines the applicant's country of origin as "the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national." Under this definition, an applicant can have more than one country of origin.
If a §44 applicant is domiciled or incorporated in the relevant country, the examining attorney should presume that the country is the applicant's country of origin, and should not issue any inquiry about the applicant's country of origin.
If a §44(e) applicant is not domiciled or incorporated in the relevant country (or if a §44(d) applicant is not domiciled or incorporated in a treaty country), the examining attorney should require the applicant to establish that the country is its country of origin. Normally, a statement by the applicant or the applicant's attorney that the applicant has a bona fide and effective industrial or commercial establishment in the relevant country will be sufficient to establish that the country is the applicant's country of origin. This statement does not have to be verified. However, if there is any evidence in the record that contradicts the applicant's assertion that it has a bona fide and effective industrial or commercial establishment in the relevant country, the examining attorney has the discretion to require the applicant to set forth the specific circumstances that establish that the applicant maintains a bona fide and effective industrial or commercial establishment in the country. Relevant factors include the presence of production facilities, business offices and personnel. The presence of an applicant's wholly-owned subsidiary in a country does not, by itself, establish country of origin. In re Aktiebolaget Electrolux, 182 USPQ 255 (TTAB 1974). See also Ex parte Blum, 138 USPQ 316 (Comm'r Pats. 1963).
The United States, by definition, is not a country that has a treaty with the United States. Therefore, the term "country of origin" in §§44(b) and (c) means some country other than the United States. In re Fisons Ltd., 197 USPQ 888 (TTAB 1978). See TMEP §1002.05.
See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).