T.M.E.P. § 1004
Applications Based on Foreign Registrations under ¤44(e)

Executive summary:

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

If a qualified applicant (see TMEP §1002.01) owns a valid registration from the applicant's country of origin, the applicant may base its United States application on that foreign registration under §44(e).

A §44(e) application 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) and (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 extends reciprocal registration rights to nationals of the United States. 15 U.S.C. 1126(b). See TMEP §§1002.03 , 1002.04 and 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 verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. 1126(e). If the verified statement is not filed with the initial application, the verified statement must allege that the applicant has had a bona fide intention to use the mark in commerce since the application filing date. 37 C.F.R. 2.34(a)(3)(i).

(5) The scope of the goods covered by the §44(e) basis cannot exceed the scope of the goods or services in the foreign registration. 37 C.F.R. 2.32(a)(6); TMEP §1402.01(b).

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 §604. This can be done through TEAS, at This can be done through TEAS, at www.uspto.gov/teas/index.html.

Applicant may not file an application under §44(e) 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 the pending application.