TMEP 1006: Assignment of §44 Applications

This is the October 2015 Edition of the TMEP

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1006    Assignment of §44 Applications

A §44 applicant may assign the foreign application or registration and/or the U.S. application from the original applicant to another party.

Assignee Must Be Eligible for the Benefits of §44

To continue to claim the benefits of §44 after such an assignment, the assignee of the U.S. application must be eligible for the benefits of §44. Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006); Nestle Co., Inc. v. Grenadier Chocolate Co., 212 USPQ 214 (TTAB 1981); In re Fisons Ltd., 197 USPQ 888 (TTAB 1978). See TMEP §1002.01 regarding applicants eligible for registration under §44(e) and TMEP §1002.02 regarding applicants eligible for a priority filing date under §44(d).

To be eligible for registration under §44(e), the assignee must establish that the country that issued the relevant registration is the assignee’s country of origin. TMEP §§1002.01, 1002.04. See also TMEP §1004 regarding the requirements for registration under §44(e).

To be eligible for a priority filing date under §44(d), any non-United States assignee must establish that the assignee’s country of origin is a party to an international treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights of priority to U.S. nationals. See TMEP §§1002.02, 1002.03, 1002.04; see also TMEP §1003.

In an application based solely on §44, if the assignee is not entitled to registration under §44(e), the examining attorney must refuse registration under that basis. The applicant may amend the application to claim §1(a) or §1(b) as a basis. In Karsten, supra, the Board held that the assignment of a properly filed §44 application to a party who is not eligible to claim the benefits of §44 does not render the application void, as long as there is a continuing valid basis for registration. See TMEP §806.03 regarding amendment of the basis.

In a §44(d) application, if the assignee is not eligible for a priority filing date (i.e., a non-United States applicant whose country of origin is not a party to any convention or treaty as outlined in §44(b)), the examining attorney must advise the assignee that it is not entitled to priority, ensure that the priority claim is deleted from the Trademark database, and conduct a new search of USPTO records for conflicting marks. TMEP §1002.02.

Assignee Does Not Have To Be the Owner of the Underlying Foreign Application or Registration

The Trademark Act requires that an applicant own the underlying application or registration at the time of filing in the United States (or as of the filing date of the amendment adding or substituting §44 as a basis, for an application originally based on §1(a) or §1(b), and later amended to add or substitute §44 as a basis). TMEP §1005. However, if the applicant was the owner of the foreign application or registration on the filing date of the U.S. application (or amendment adding or substituting §44 as a basis), the applicant may assign the U.S. application to another party without assigning the underlying foreign application or registration to that party. See In re De Luxe N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993). Therefore, examining attorneys should not require proof of assignment of the underlying foreign application or registration when an applicant assigns the U.S. application.

Designation of Domestic Representative Encouraged

If the U.S. application is assigned to a party who is not domiciled in the United States, the assignee may file an appointment of a domestic representative with the assignment of the U.S. application. 15 U.S.C. §1060(b); 37 C.F.R. §3.61; see TMEP §610. The USPTO encourages parties who do not reside in the United States to designate domestic representatives. This can be done through TEAS, at http://www.uspto.gov.