TMEP 806.01(d): Foreign Registration - §44(e)

October 2017 Edition of the TMEP

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806.01(d)    Foreign Registration - §44(e)

Under 15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3), the requirements for establishing a basis for registration of a trademark or service mark 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, and, if the foreign registration or other certification is not in English, the applicant must provide a translation of the document. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01, 1004.01(b);
  • (2) The application must include the applicant’s verified statement that the applicant has a bona fide intention to use the mark in commerce. 15 U.S.C. §1126(e);  37 C.F.R. §§2.2(l), 2.34(a)(3)(i).  This allegation is required even if use in commerce is asserted in the application. TMEP §806.02(e).  If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §§2.2(l), 2.34(a)(3)(i); and
  • (3) 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 TMEP §§1002–1002.05.

If the applicant does not submit a certification or a certified copy of the registration from the 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. §2.32(a)(6); 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 §§806.03–806.03(l) regarding amendments to add or substitute a basis.

See TMEP §§1303.01(a)(iv), 1304.02(a)(iv), 1306.02(a)(iv)-(a)(iv)(A) for a list of the requirements for a §44(e) basis for collective and certification mark applications.

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