TMEP 1001: Section 44 Applications - General

October 2017 Edition of the TMEP

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1001    Section 44 Applications - General

The United States has assumed certain obligations from agreements adopted at the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to these agreements.  The United States is also a member of the Inter-American Convention for Trademarks and Commercial Protection (also known as the "Pan-American Convention"), the Buenos Aires Convention for the Protection of Trade Marks and Commercial Names, the World Trade Organization, and certain other treaties and agreements.  See TMEP §1002.03 and Appendix B of this Manual for additional information about treaties and international agreements.

Section 44 of the Trademark Act, 15 U.S.C. §1126, implements these agreements.  Section 44 applications fall into two basic categories: (1) United States applications relying on foreign applications to secure a priority filing date in the United States under §44(d); and (2) United States applications relying on ownership of foreign registrations as a basis for registration in the United States under §44(e).  See TMEP §§1003 et seq. regarding §44(d), and TMEP §§1004 et seq. regarding §44(e).

Section 44(d) of the Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration. See TMEP §1003.03.

An applicant may file an application based solely on §44, or may claim §44 in addition to §1(a) or §1(b) as a filing basis.  An applicant who claims more than one basis must comply with all application requirements for each basis asserted. 37 C.F.R. §2.34.  See TMEP §§806.02–806.02(g) regarding multiple-basis applications and §§806.03(j)-806.03(j)(iii) regarding amending the basis after publication.

In an application based solely on §44, the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration. TMEP §1009.

In limited circumstances, applicants domiciled in the United States may be entitled to file under §44, if they meet the requirements of the Act. See TMEP §1002.05.

See TMEP Chapter 1900 regarding international registration under the Madrid Protocol.