TMEP 1005: Ownership of the Foreign Application or Registration

October 2017 Edition of the TMEP

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1005    Ownership of the Foreign Application or Registration

Section 44 Claimed in Original Application

If an applicant claims §44 as the filing basis in the original U.S. application, or if the applicant omits the basis from the original U.S. application and subsequently claims §44 as the basis, the applicant must be the owner of the foreign application or registration on the filing date of the U.S. application. See In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587 (TTAB 2014); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).

Generally, the applicant is not required to submit a copy of the foreign application to receive a priority filing date. See TMEP §1003. However, if other evidence in the record calls into question the applicant’s ownership of the foreign application on the filing date of the U.S. application, the examining attorney must require the applicant to establish its ownership of the foreign application on the date of filing in the United States. For example, if the U.S. application includes a priority claim under §44(d), and the applicant then attempts to perfect its §44 filing basis by submitting a foreign registration showing a different owner name from that of the U.S. applicant, this difference raises a question as to the applicant’s ownership of the underlying foreign application. Therefore, the examining attorney must issue a request for information under §2.61(b), requiring the applicant to establish its ownership of the foreign application on the date of filing in the United States, and advise the applicant that if it did not own the foreign application on the filing date of the U.S. application, the applicant is not entitled to priority and the claim will be deleted. The examining attorney must also refuse registration under §44(e) because the record indicates that the applicant is not the owner of a valid registration in the applicant’s country of origin. See 15 U.S.C. §1126(c), (e); TMEP §1002.01. If the applicant provides proof that it was the owner of the foreign application on the date of filing in the United States, the application will retain the priority filing date. However, the applicant must additionally satisfy the requirements for registration under §44(e).

Proof of ownership must show the applicant for registration in the United States as the owner of the foreign application or registration as of the date of filing in the United States and may consist, for example, of a copy of an assignment document, a statement from the agency administering the trademark register in the foreign country establishing that the applicant was the owner of the foreign application or registration as of the U.S. application filing date, or a printout from the intellectual property office’s website.  Note that while a website printout may suffice for purposes of establishing ownership, for purposes of proof of the status of a foreign registration, a printout generally is not acceptable. See TMEP §§1004.01, 1004.01(a). If the transfer of ownership took place before the U.S. application filing date, the §44 basis will be considered valid.

If a §44(d) applicant was not the owner of the foreign application on the U.S. application filing date, the examining attorney must advise the applicant that it is not entitled to priority, ensure that the priority claim is deleted from the Trademark database, and conduct a new search of the USPTO’s records for conflicting marks. TMEP §1002.02.

If a §44(e) applicant was not the owner of the foreign registration on the U.S. application filing date, the examining attorney must refuse registration under §44(e).  The applicant may amend the application to claim §1(a) or §1(b) as a basis.  See TMEP §§806.03–806.03(l) regarding amendment of the basis.

Section 44 Added to or Substituted for Valid Section 1 Basis

If an application is properly filed based on §1(a) or §1(b), and the applicant later amends the application to add or substitute §44 as a basis, the applicant must be the owner of the foreign application or registration as of the filing date of the amendment adding or substituting a §44 claim of priority or basis for registration. See SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014). Note that the applicant may amend to add a claim of priority under §44(d) only within the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.03 regarding amendments to change the basis.

If the applicant owned the foreign application or registration on the filing date of the amendment, but did not own the foreign application or registration on the filing date of the U.S. application, the applicant will retain the original filing date in the United States, as long as there was a continuing valid basis since the application filing date. See37 C.F.R. §2.35(b)(3); TMEP §806.03(h).

If the applicant was not the owner of the foreign application on the filing date of an amendment adding a §44(d) priority date, the examining attorney must advise the applicant that it is not entitled to priority and ensure that the priority claim is not entered into the Trademark database. TMEP §1002.02.

If the applicant was not the owner of the foreign registration on the filing date of the amendment adding or substituting a §44(e) basis, the examining attorney must refuse registration under §44(e). The applicant may amend the application to reassert or claim §1(a) or §1(b) as the basis.

See TMEP §§806.03–806.03(l) regarding amendment of the basis and TMEP §1006 regarding assignment of §44 applications.