TMEP 716.02(b): Submission of Copy of Foreign Registration in §44(d) Application

This is the October 2015 Edition of the TMEP

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716.02(b)    Submission of Copy of Foreign Registration in §44(d) Application

When an applicant who claims the benefit of a prior foreign application under §44(d) of the Act, 15 U.S.C. §1126(d), is required to submit a copy of a foreign registration, the applicant may respond to the requirement by stating that the foreign application is still pending. The examining attorney should then suspend further action pending receipt of a copy of the foreign registration, if the application is otherwise in condition for approval for publication, allowance for registration on the Supplemental Register, or final action. See TMEP §1003.04(a).

If an applicant asserts a claim of priority under §44(d) in addition to another basis, before suspending the application, the examining attorney must inquire whether the applicant wishes to retain §44(e) as a second basis for registration (based on the foreign registration that will issue from the foreign application on which the applicant relied for priority). However, if the application is filed via TEAS and indicates that the applicant is not relying on §44(e) as an additional basis for registration and is only asserting §44(d) to receive a priority filing date, the examining attorney will not inquire and will not suspend further action, but must ensure that the Trademark database is updated accordingly. See TMEP §1003.04(b) for further information.

If the applicant responds that it intends to assert a dual basis for registration and the application is otherwise in condition for approval for publication, allowance for registration on the Supplemental Register, or final action, the examining attorney should suspend further action pending receipt of the foreign registration.

During the suspension period, the examining attorney will issue an Office action approximately every six months after suspension to inquire as to the status of the foreign application. If the applicant does not respond to the inquiry, the application will be abandoned. See TMEP §716.05.

The examining attorney may suspend the application pending receipt of the foreign registration only in a §44(d) application before issuance of the Notice of Allowance. In a §44(e) application, the examining attorney will not suspend the application pending submission of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). TMEP §1004.01. However, the examining attorney may suspend a §44(e) application pending receipt of proof of renewal of the foreign registration. TMEP §1004.01(a).