T.M.E.P. § 1003.04
Suspension Awaiting a Foreign Registration
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.
For more information on trademark law, please see the Trademark Section of BitLaw.
Previous Section (§1003.03) | Next Section (§1003.05)
1003.04 Suspension Awaiting a Foreign Registration
Suspension Required When Application in Condition for Approval or Final Refusal
In a §44(d) application, if a copy of the foreign registration has not been submitted at the time of filing in the United States, the examining attorney will require submission of a copy of the foreign registration before approving the United States application for publication, or for registration on the Supplemental Register.
If, on initial examination of the application, there are no other issues or requirements outstanding, the examining attorney will suspend action on the application pending receipt of a copy of the foreign registration.
If the examining attorney must issue any refusals or requirements, the examining attorney will take appropriate action to place the application in condition for either approval or for final action on all other issues, and will then suspend further action pending receipt of a copy of the foreign registration. In the notice of suspension, the examining attorney should reference any continued refusals or requirements. See TMEP §716.01.
Inquiry Required Before Suspension of Multi-Basis Applications
If an applicant claiming priority under §44(d) asserts more than one basis for registration, before suspending the application, the examining attorney must inquire whether the applicant wishes to retain §44(e) as a second basis for registration (based on the foreign registration that will issue from the application on which the applicant relied for priority) before suspending the application. This inquiry should be made in the first Office action, or by telephone if no Office action is issued. If the examining attorney is unable to reach the applicant by telephone, the examining attorney should issue an Office action requiring a copy of the foreign registration, advising applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquiring as to whether the applicant wishes to retain §44(e) as a second basis for registration. The applicant may elect not to perfect a §44(e) basis and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4); TMEP §806.04(b).
Periodic Inquiries Issued as to Status of Foreign Application
Examining attorneys 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 to this inquiry within six months of the mailing date, the application will be abandoned.
If the applicant is still unable to furnish a copy of the foreign registration at the time of the inquiry, the applicant should advise the examining attorney of this fact. This may be done by telephone. The examining attorney will issue a new notice of suspension.