807.12(b) Applications Under §44 of the Trademark Act
In a §44 application, 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 applicant’s country of origin.” 37 C.F.R. §§2.51(c), 2.72(c)(1). 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 a specimen supports use of a mark in an application under §1 of the Trademark Act. See TMEP §1011.01. The drawing in the United States application must display the entire mark as registered in the foreign country. The applicant may not limit the mark to part of the mark shown in the foreign registration, even if it creates a separate and distinct commercial impression.
Exception: Non-material informational matter that appears on the foreign registration, such as net weight or contents, or the federal registration notice, may be omitted or deleted from the drawing.
When the mark on the drawing does not agree with the mark on the foreign registration, the applicant cannot amend the drawing of the mark if the amendment would materially alter the mark on the original drawing. 37 C.F.R. §2.72(c); TMEP §§807.14–807.14(f), 1011.01.
If the United States application has a black-and-white drawing, and color appears in the foreign registration, or color is claimed or described as a feature of the mark in the foreign registration, the mark in the United States drawing does not agree with the mark in the foreign registration. In general, the black-and-white drawing in the United States application should be amended to agree with the color mark in the foreign registration, unless the proposed amendment would be a material alteration.
If the United States application has a color drawing, the same colors must be part of the mark in the foreign registration. Whether the drawing in the United States application can be amended depends upon whether the amendment would be a material alteration of the mark. If the United States application has a color drawing but the drawing in the foreign registration is in black and white with no color claim, the applicant must either: (1) amend the drawing in the United States application to a black-and-white drawing, if the amendment would not be a material alteration; or (2) delete the §44 basis and proceed under §1.
See TMEP §1214.02 regarding the agreement of the mark on the drawing with the mark on the foreign registration in an application that seeks registration of a mark with a “phantom” or changeable element.