TMEP 1002.03: Establishing Entitlement Under a Treaty

October 2017 Edition of the TMEP

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1002.03    Establishing Entitlement Under a Treaty

In a §44 application, the examining attorney must confirm that: (1) both the applicant’s country of origin and the country where the applicant has filed the application or obtained registration are parties to a treaty or agreement with the United States (or that they extend reciprocal rights to U.S. nationals by law); and (2) the specific benefit that the applicant is claiming under §44 (i.e., the right to a priority filing date under §44(d) and/or the right to registration under §44(e)) is provided for under the treaty or agreement. See TMEP §§1002.01, 1002.02.

To determine whether a particular country has a treaty with the United States that provides for the benefit that the applicant is claiming under §44, examining attorneys should consult Appendix B of this manual.  Appendix B lists the members of the Paris Convention, Inter-American Convention, Buenos Aires Convention, World Trade Organization, European Union ("EU"), and certain countries entitled to reciprocal treatment under other international agreements, as well as websites where examining attorneys can obtain updated information about these treaties or agreements.

Some EU member states maintain special relationships with overseas countries and territories (OCTs), which include Aruba, Bonaire, Curaçao, Saba, St-Eustatius, St-Maarten, New Caledonia, French Polynesia, Wallis et Futuna, Saint-Pierre et Miquelon, and Mayotte. Generally, these OCTs are not parties to a relevant treaty or agreement with the United States, nor do they extend reciprocal rights to U.S. nationals by law, as required by Trademark Act Section 44. Therefore, if the applicant’s country of origin, or the country that issued the foreign registration, is one of these OCTs, the application is not entitled to priority under §44(d) or registration under §44(e) unless they fall under one of the exceptions below. See 15 U.S.C §1126(b), (d), (e); TMEP §§1002.01, 1002.02.

Note, however, that citizens of British overseas territories and Crown Dependencies are also citizens of the United Kingdom. See GOV.UK, Types of British Nationality, https://www.gov.uk/types-of-british-nationality/british-overseas-territories-citizen (accessed Aug. 2 2017). Therefore, individuals claiming citizenship in Anguilla, Bermuda, British Antarctic Territory, British Indian Ocean Territory, British Virgin Islands, Cayman Islands, Falkland Islands, Gibraltar, Montserrat. Pitcairn Islands, Saint Helena, Ascension and Tristan da Cunha, South Georgia and the South Sandwich Islands, Turks and Caicos Islands, the Bailiwick of Jersey, the Bailiwick of Guernsey, and the Isle of Man will be considered as having the United Kingdom as one of their countries of origin. However, this exception does not apply to juristic persons. Accordingly, individuals, but not juristic persons, from one of the British overseas territories or Crown Dependencies, are entitled to priority under §44(d) or registration under §44(e) so long as the relevant foreign registration issued from a country that is party to a treaty or agreement with the United States. There is also an exception allowing an applicant from a United Kingdom territory to rely on a United Kingdom registration if the applicant has an address in the United Kingdom or in the Isle of Man. For more information about OCTs, see https://ec.europa.eu/europeaid/regions/octs_en.

In a §44 application or an amendment adding or substituting §44 as a basis, an eligible applicant may rely on an application filed in or registration issued by certain common offices of several states. A "common office of several states" refers to an entity serving as the issuing office for trademark registrations for an established group of countries.  Examples include the Benelux Trademark Office, servicing Belgium, The Netherlands, and Luxembourg; and the African Intellectual Property Organization ("OAPI"), which issues registrations covering all member states (i.e., Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo).

An applicant may also claim the benefits of §44 based on an application for or registration of a Community Trade Mark, if the applicant has a bona fide and effective industrial or commercial establishment in a country or state that is a member of the EU, formerly known as the European Community (EC) or European Economic Community (EEC).  See Appendix B for a list of these countries.

If an eligible applicant filed an application or obtained a registration in a country that is a member of the Paris Convention, Inter-American Convention, World Trade Organization, or European Union, the applicant can claim the benefits of either §44(d) or §44(e), if the applicant meets the requirements of those sections.  An eligible applicant may also file under either §44(e) or §44(d) based on an application filed or registration obtained in Taiwan.  On the other hand, if the applicant filed an application or obtained a registration in a country that is a member of the Buenos Aires Convention, the applicant may seek registration under §44(e), but may not obtain a priority filing date under §44(d).  See Appendix B for additional information.

In the case of agreements not covered in Appendix B, an applicant can establish its eligibility for the benefits of §44 by providing evidence of statutes or agreements establishing reciprocity between the United States and the relevant country.  Examining attorneys may also consult sources such as Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2d ed. 2008), available to USPTO employees in the Trademark Law Library, for information about the trademark laws of foreign countries.  Additional resources are listed in Appendix B.

See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).