TMEP 1306.02(a)(iv): Foreign Registration – §44(e)

This is the October 2015 Edition of the TMEP

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1306.02(a)(iv)    Foreign Registration – §44(e)

Under 15 U.S.C. §§1054, 1126(e) and 37 C.F.R. §2.45(a)(4)(iii), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:

  • (1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. If the foreign registration or other certification is not in English, the applicant must provide a translation of the document. If the record indicates that the foreign registration will expire before the U.S. registration will issue, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of a proof of renewal from the applicant’s country of origin to establish that the foreign registration has been renewed and will be in full force and effect at the time the U.S. registration will issue. If the proof of renewal is not in the English language, the applicant must submit a translation (37 C.F.R. §2.45(a)(4)(iii)(A); TMEP §§1004.01, 1004.01(b));
  • (2) The applicant must submit a statement specifying what the applicant will be certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(iii)(B));
  • (3) The applicant must submit a statement that the applicant will not engage in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant (37 C.F.R. §2.45(a)(4)(iii)(B));
  • (4) The applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except authorized users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true (37 C.F.R. §2.45(a)(4)(iii)(C); see 15 U.S.C. §§1051(b)(3)(B), 1054). See TMEP §1306.02(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act; and
  • (5) The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law (see 15 U.S.C. §1026(b), TMEP §1002.03).

If the applicant does not submit a certification or a certified copy of the registration from its country of origin, the applicant must submit a true copy or photocopy 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 an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.

The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.45(a)(2); TMEP §1402.01(b).

An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished. TMEP §1004.02. See TMEP §806.03 regarding amendments to add or substitute a basis.

See TMEP §1306.03(a) regarding statements specifying what the mark is intended to certify and TMEP § 1306.03(c) regarding statements that the applicant will not engage in the production or marketing of the goods/services.

See TMEP §§1004–1004.02 for further information about §44(e) applications.