TMEP 806.04(b): Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis

October 2017 Edition of the TMEP

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806.04(b)    Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis

If an applicant properly claims §44(d) in addition to another basis, the applicant may elect not to perfect a §44(e) basis and still retain the §44(d) priority filing date. 37 C.F.R. §§2.35(b)(3) and (4); TMEP §§806.01(c) and 806.02(f).

When a §44(d) applicant elects not to proceed to registration under §44(e), the USPTO does not delete the §44(d) priority claim from the Trademark database.  Both the §44(d) priority claim and the other basis will remain in the Trademark database.

Sometimes, a §44(d) applicant who elects not to perfect a §44(e) basis will file an amendment "deleting" the §44 basis.  In this situation, the USPTO will presume that the applicant wants to retain the priority claim, unless the applicant specifically states that it wants to delete the priority claim and instead rely on the actual filing date of the application in the United States.

If the applicant is not entitled to priority (e.g., because the United States application was not filed within six months of the foreign filing), the examining attorney must ensure that the priority claim is deleted from the Trademark database, and must conduct a new search of USPTO records for conflicting marks.