T.M.E.P. § 1011.01
Substantially Exact Representation of Mark in Foreign Registration

Executive summary:

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1011.01 Substantially Exact Representation of Mark in Foreign Registration

Applicants filing under §44 must comply with the drawing requirements of 37 C.F.R. §§2.51 through 2.54. The drawing of the mark must be "a substantially exact representation of the mark as it appears in the drawing in the registration certificate of the mark duly registered in the country of origin of the applicant." 37 C.F.R. 2.51(c); TMEP §807.12(b).

The "substantially exact representation" standard is construed narrowly. Only slight, inconsequential variations between the mark in the United States application and the mark shown in the foreign registration are permitted. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995); United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1484 (TTAB 1988). For example, non-material informational matter such as net weight or contents may be deleted. Beyond such limited exceptions, however, any difference between the mark on the drawing and the mark in the foreign registration requires the examining attorney to refuse registration. In re Hacot-Colombier, 105 F.3d at 619, 41 USPQ2d at 1525.

The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act. In United Rum Merchants, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44 applications represent an exception to the use requirements of the Act, and that this exception should be construed narrowly to ensure that a foreign applicant cannot obtain a registration in the United States of matter that could not have been registered in the foreign country. 9 USPQ2d at 1483-84.

If the mark in the foreign registration is in special form, the mark in the United States application must appear in the same special form. Likewise, if the mark in the foreign registration is in standard characters, the mark in the United States application must also be in standard characters. If the foreign registration certificate does not indicate that the mark is in standard characters (or the equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters. The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the equivalent), or delete the standard character claim in the United States application. See TMEP §807.03(f) for further information.

The mark on the drawing in the United States application may not be a translation or transliteration of the mark in the foreign registration.

If the United States application is based on both a foreign registration and use in commerce, the mark in the drawing in the United States application may not differ in a material way from either the mark shown on the foreign registration or the mark shown on the specimen(s) of record. See TMEP §§807.12(b) and 807.14 et seq..