TMEP 1007: Standards for Registration Under Section 44

October 2017 Edition of the TMEP

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1007    Standards for Registration Under Section 44

Although §44 exempts eligible applicants from the use requirements of §1 of the Trademark Act, §44 applicants must meet all other requirements for registration set forth in the Trademark Act and relevant rules.  Registration in a foreign country does not automatically ensure eligibility for registration in the United States. In re Rath, 402 F.3d 1207, 1214, 74 USPQ2d 1174, 1179 (Fed. Cir. 2005) ("[I]t is impossible to read section 44(e) to require the registration of foreign marks that fail to meet United States requirements for eligibility.  Section 44 applications are subject to the section 2 bars to registration...."); In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); Order Sons of Italy in Am. v. Marofa S.A., 38 USPQ2d 1602 (TTAB 1996).

The foreign registration that is the basis for the U.S. application may include disclaimers or may be on a secondary register, equivalent to the Supplemental Register.  The U.S. application will be reviewed according to the standards for registrability in the United States, and the examining attorney will not require a disclaimer, amendment to the Supplemental Register, or any other amendment unless it is required under U.S. law and USPTO policy.