1004.01 Copy of Foreign Registration Required
Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e), requires “a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant.” If a copy of the foreign registration is not included with the application as filed, the examining attorney must require submission of a copy of the foreign registration in the first Office action. See 37 C.F.R. §2.34(a)(3)(ii). The copy must show the name of the owner, the mark, and the goods or services for which the mark is registered.
If the applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. A photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect, unless accompanied by a certification from the issuing office.
An English translation of a registration from the country of origin by itself is not an acceptable “copy” of the foreign registration. A certification or copy of the registration as issued by the intellectual property office of the country of origin is required, along with an English translation. See 37 C.F.R. §2.34(a)(3)(ii). See TMEP §1004.01(b) regarding translation of foreign registrations.
If an applicant files more than one application in the United States based on the same foreign registration, the applicant must file a copy of the foreign registration (and its English translation, if applicable), in each of the U.S. applications. See 37 C.F.R. §2.193(g).
In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). However, the examining attorney may suspend the application pending receipt of proof of renewal of the foreign registration (see TMEP §1004.01(a)).