T.M.E.P. § 1003.03
Basis for Registration Required

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1003.03 Basis for Registration Required

Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. 2.34(a)(4)(iii). If the applicant claims a §1(b) basis, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. 1051(c) or a statement of use under 15 U.S.C. 1051(d)) before the mark can be registered. See TMEP §806.01(b) regarding the requirements for a §1(b) basis.

The Office will generally presume that the applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority) in an application that includes a proper claim of priority under §44(d). Unless the applicant specifically indicates that it is claiming more than one basis, the Office will presume that §44(e) is the only basis being asserted. See TMEP §1002.02 regarding applications that are entitled to a priority filing date under §44(d), but are not entitled to registration under §44(e), because the foreign application was filed in a treaty country that is not the applicant's country of origin.

See TMEP §§1004 et seq. regarding the requirements for registration under §44(e).

A §44(d) applicant may not assert a basis under §66(a) of the Trademark Act, based on an extension of protection of an international registration to the United States. 37 C.F.R. §§2.34(b)(3) and 2.35(a).