TMEP 819.01(f)(iii): Section 44(e) - Foreign Registration

This is the October 2015 Edition of the TMEP

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819.01(f)(iii)    Section 44(e) - Foreign Registration

The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3). See also TMEP §806.01(d). The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. 37 C.F.R. §2.34(a)(3)(ii). If the foreign registration is not in the English language, the applicant must submit a translation. Id.

The following are examples of situations where an additional fee will be required:

  • Foreign Registration Omitted. TEAS Plus will not accept transmission of a §44(e) application that does not include an attachment in the “Foreign Registration” field. The additional fee will be required if the applicant attaches inappropriate material, such as a copy of the drawing or of the foreign application. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c).
  • Translation of Foreign Registration Omitted. 37 C.F.R. §§2.22(a)(7), 2.34(a)(3)(ii). The additional fee will be required if the foreign registration is not in the English language and the applicant does not include a translation.
  • Mark Not on Foreign Registration. 37 C.F.R. §§2.22(a)(7), 2.34(a)(3)(ii). The additional fee will be required if the mark shown in the drawing does not appear on the foreign registration.
  • Material Alteration. 37 C.F.R. §§2.22(a)(7), 2.34(a)(3)(ii). The additional fee will be required if the mark on the drawing is a material alteration of the mark on the foreign registration. However, no additional fee will be required if the difference between the mark on the foreign registration and the mark on the drawing is not material.

Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the additional fee.

Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. The applicant loses TEAS Plus status and must pay the additional fee.

  • Goods/Services Exceed Scope of Foreign Registration. The additional fee will be required if the examining attorney determines that the goods/services for which registration is sought under §44(e) in the U.S. application exceed the scope of those in the foreign registration. 37 C.F.R. §2.22(a)(8).

Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.34(a)(3)(iii).

Bona Fide Intention to Use the Mark in Commerce. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §§2.2(l), 2.34(a)(3)(i). The TEAS Plus form will always include this statement when the applicant asserts a §44(e) basis. See TMEP §819.01(l) regarding verification.