What is a foreign registration filing basis?

An applicant for a U.S. trademark application based on a foreign registration under Section 44(e) must submit a copy of the foreign registration from the applicant’s country of origin as well as an English translation of the foreign registration. Careful attention should be directed to the mark itself, namely, that the mark in the U.S. application matches the foreign registered mark. Also, the scope of the identification of goods and services cannot exceed that of the foreign registration.

What are the requirements for basing a US trademark application on a foreign registration?

Per TMEP Section 1004, here’s a list of all the requirements for a Section 44(e) application:

(1) The applicant must be the owner of a valid registration in the applicant’s country of origin.  15 U.S.C. §1126(c), (e). See TMEP §1002.01 and §1002.04 regarding country of origin.

(2) The applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration, or must extend reciprocal registration rights to nationals of the United States.  15 U.S.C. §1126(b); see TMEP §§1002.03, 1002.04, 1002.05.

(3) 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.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.

(4) The applicant must provide a 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. §2.34(a)(3)(i).  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. §2.34(a)(3)(i).

(5) The scope of the identification covered by the §44(e) basis may not exceed the scope of the identification in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).

Will a Statement of Use still be required?

In an Intent-To-Use trademark application that also includes a foreign registration filing basis under Section 44(e), the applicant may bypass the Statement of Use by deleting the Section 1(b) filing basis and relying solely on the foreign registration. However, the trademark owner should commence use in the US promptly after registration to avoid cancellation attacks based on abandonment or non-use.

Is a Section 44 US registration independent of the underlying foreign registration?

Yes, a US trademark registration based on Section 44 will exist independent of the underlying foreign registration [see TMEP 1015].

Can a Section 44(e) filing basis be added after initial filing?

Yes, an applicant can add a Section 44(e) foreign registration basis after the initial filing and before publication [see TMEP 806.03(g)]. When adding a Section 44(e) basis, the applicant must submit a copy of the foreign registration with the amendment, and an English translation if the foreign registration is in a non-English language.

In contrast, an applicant can add or substitute a Section 44(d) filing basis only within six months of the filing date of the foreign application.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.