TMEP 1011.01: Substantially Exact Representation of Mark in Foreign Registration

This is the October 2015 Edition of the TMEP

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1011.01    Substantially Exact Representation of Mark in Foreign Registration

The drawing of the mark must be “a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the country of origin of the applicant.” 37 C.F.R. §2.51(c); TMEP §807.12(b).

The “substantially exact representation” standard is construed narrowly. Only slight, inconsequential variations between the mark in the U.S. application and the mark shown in the foreign registration are permitted. In re Hacot-Colombier, 105 F.3d 616, 618, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995); United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1484 (TTAB 1988). For example, non-material informational matter such as net weight or contents may be deleted. Beyond such limited exceptions, however, any difference between the mark on the drawing and the mark in the foreign registration requires the examining attorney to refuse registration. In re Hacot-Colombier, 105 F.3d at 619, 41 USPQ2d at 1525.

The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act. In United Rum Merchants, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44 applications represent an exception to the use requirements of the Act, and that this exception should be construed narrowly to ensure that a foreign applicant cannot obtain a registration in the United States of matter that could not have been registered in the foreign country. United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d at 1483-84.

If the mark in the foreign registration is in standard characters, the mark in the U.S. application must also be in standard characters. If the foreign registration certificate does not indicate that the mark is in standard characters (or the legal equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters. The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the U.S. application. See TMEP §807.03(f) for further information. See also Appendix E, which lists countries that register marks in standard characters or the equivalent.

Likewise, if the mark in the foreign registration is in special form, the drawing of the mark in the U.S. application must appear in the same special form. If the mark in the foreign registration shows color, the applicant must submit a color photocopy of the foreign registration. All claims of color made in the foreign registration must also be made in the U.S. application. The applicant must also comply with all requirements for a color drawing of the mark. See 37 C.F.R. §2.52(b)(1) and TMEP §§807.07 et seq. regarding the requirements for claiming color.

If the foreign registration is not issued in color, the examining attorney may require evidence to establish that a colored mark in a U.S. application is a substantially exact representation of the mark in the foreign registration. For example, the examining attorney may require evidence of the foreign country’s procedure for designating color when the foreign registration does not reflect the colors shown in the U.S. application.

If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes a claim of color(s) as a feature of the mark. The applicant must either: (1) submit an affirmative statement that color is claimed as a feature of the mark in the foreign registration; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration. If the examining attorney determines that the color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing. See TMEP §807.07(b).

The mark on the drawing in the U.S. application may not be a translation or transliteration of the mark in the foreign registration.

If the U.S. application is based on both a foreign registration and use in commerce, the mark on the drawing in the U.S. application must not only be a substantially exact representation of the mark in the foreign registration, but also may not differ in a material way from the mark shown on the specimen(s) of record. See TMEP §§807.12(b), 807.14 et seq.