TMEP 819.01(f)(iv): Section 44(d)

October 2017 Edition of the TMEP

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819.01(f)(iv)    Section 44(d)

The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.34(a)(4). See also TMEP §806.01(c).

Claim of Priority Filed Within Six Months of Foreign Filing.  The additional fee will be required if the claim of priority is not filed through TEAS within six months of the filing date of the foreign application.  The applicant can submit the priority claim after the filing date of the U.S. application, as long as the priority claim is filed within six months after the foreign filing. 37 C.F.R. §§2.22(a)(7), 2.34(a)(4)(i).

First Filed Application.  The applicant must: (a) specify the filing date and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.  The additional fee will be required if applicant does not meet this requirement. 37 C.F.R. §§2.22(a)(7), 2.34(a)(4)(i)(B).

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 in the U.S. application exceed the scope of those in the foreign application or registration. 37 C.F.R. §2.22(a)(8).

Serial Number of Foreign Application Omitted - No Fee Required.  No additional fee is required if a §44(d) filing basis is asserted and the applicant fails to specify the serial number of the foreign application in the initial application, because some applicants will not yet know the serial number of the foreign application at the time of filing in the United States.  However, the serial number must be provided before the application can be approved for publication. 37 C.F.R. §2.34(a)(4)(i)(A).

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)(4)(ii). The TEAS Plus form will always include this statement when the applicant asserts a §44(d) basis.  See TMEP §819.01(l) regarding verification.