T.M.E.P. § 1007
Standards for Registration Under Section 44

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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1007 Standards for Registration Under Section 44

Although §44 exempts qualified applicants from the use requirements of §1 of the Trademark Act, §44 applicants must meet all other requirements for registration set forth in the Trademark Act and relevant rules. Registration in a foreign country does not automatically ensure eligibility for registration in the United States. In re Rath , 402 F.3d 1207 , 74 USPQ2d 1174, 1179 (Fed. Cir. 2005) ("[I]t is impossible to read section 44(e) to require the registration of foreign marks that fail to meet United States requirements for eiligibility. Section 44 applications are subject to the section 2 bars to registration..."); In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); Order Sons of Italy in America v. Marofa S.A., 38 USPQ2d 1602 (TTAB 1996).

The foreign registration that is the basis for the United States application may include disclaimers or may be on a secondary register, equivalent to the Supplemental Register. The United States application will be reviewed according to the standards for registrability in the United States, and the examining attorney will not require a disclaimer, amendment to the Supplemental Register or any other amendment unless it is required under United States law and Office policy.

See TMEP §1306.08 regarding the registration of certification marks under §44.