The United States has assumed certain obligations from agreements adopted at the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to these agreements. The United States is also a member of the Inter-American Convention for Trademarks and Commercial Protection (also known as the "Pan-American Convention"), the Buenos Aires Convention for the Protection of Trade Marks and Commercial Names, the World Trade Organization, and certain other treaties and agreements. See TMEP §1002.03 and Appendix B of this Manual for additional information about treaties and international agreements.
Section 44 of the Trademark Act, 15 U.S.C. §1126, implements these agreements. Section 44 applications fall into two basic categories: (1) U.S. applications relying on foreign applications to secure a priority filing date in the United States under §44(d) and (2) U.S. applications relying on ownership of foreign registrations as a basis for registration in the United States under §44(e). See TMEP §§1003-1003.08 regarding §44(d), and §§1004-1004.02 regarding §44(e).
Section 44(d) of the Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration. See TMEP §§1003.03.
An applicant may file an application based solely on §44, or may claim §44 in addition to §1(a) or §1(b) as a filing basis. An applicant who claims more than one basis must comply with all application requirements for each basis asserted. 37 C.F.R. §2.34. See TMEP §§806.02–806.02(g) regarding multiple-basis applications and §§806.03(j)-806.03(j)(iii) regarding amending the basis after publication.
In an application based solely on §44, the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration. TMEP §1009.
In limited circumstances, applicants domiciled in the United States may be entitled to file under §44, if they meet the requirements of the Act. See TMEP §1002.05.
Applications based on Section 44, and related submissions, must be filed through TEAS unless an exception to the requirement to file electronically applies. See 37 C.F.R. §§2.21(a), 2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions.
See TMEP Chapter 1900 regarding international registration under the Madrid Protocol.
To be eligible for registration under §44(e), an applicant must meet the following requirements:
See TMEP §1002.04 regarding the applicant’s country of origin, and §1002.03 and Appendix B for information about how to determine whether a particular country is a party to a treaty or agreement, or provides reciprocal registration rights to U.S. nationals.
If an applicant does not meet the requirements listed above, the examining attorney must refuse registration under §44(e). See SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014). The applicant may amend the application to claim §1(a) or §1(b) as a basis. See TMEP §806.03 regarding amendment of the basis.
An applicant domiciled in the United States cannot obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant’s country of origin. See TMEP §1002.05.
See TMEP §§1004-1004.02 for additional information about the requirements for registration under §44(e).
To be eligible for a priority filing date under §44(d), an applicant must meet the following requirements:
See TMEP §1002.04 regarding the applicant’s country of origin, and §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides a right of priority to U.S. nationals.
If an applicant does not meet the requirements listed above, the examining attorney must advise the applicant that it is not entitled to priority. If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect an acceptable basis before the application can be approved for publication or registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and §806.03 regarding amendment of the basis. The examining attorney must ensure that the priority claim is deleted from the Trademark database and conduct a new search of the records of the United States Patent and Trademark Office (USPTO) for conflicting marks.
To obtain a priority filing date under §44(d), the foreign application does not have to be filed in the applicant’s country of origin. However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which the applicant relies for priority, the applicant must establish that the country in which the application was filed is its country of origin. TMEP §1002.01. Therefore, if the applicant files a §44(d) priority claim based on an application from a treaty country other than the country in which the applicant is domiciled, the examining attorney must advise the applicant that in order to rely on the registration issuing from the identified foreign application as its basis for registration, the applicant will be required to establish that the country where the foreign application was filed is its country of origin.
It is important to keep in mind that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. A party who files under §44(d) must establish a basis for registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03. For example, a French corporation may rely on a first-filed application in Canada for its priority claim under §44(d), regardless of whether Canada is the applicant’s country of origin. However, before the mark can be published for opposition in the United States, the French corporation must do one of the following: (1) establish Canada as its country of origin and rely on the prospective Canadian registration as its basis for registration in the United States (see TMEP §§1002.01, 1002.04); (2) assert use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication in the United States; or (3) rely on a registration from France as its basis for registration in the United States.
An applicant domiciled or organized in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States. See TMEP §1002.05.
See TMEP §§1003-1003.08 for additional information about the requirements for obtaining a priority filing date under §44.
In a §44 application, the examining attorney must confirm that: (1) both the applicant’s country of origin and the country where the applicant has filed the application or obtained registration are parties to a treaty or agreement with the United States (or that they extend reciprocal rights to U.S. nationals by law); and (2) the specific benefit that the applicant is claiming under §44 (i.e., the right to a priority filing date under §44(d) and/or the right to registration under §44(e)) is provided for under the treaty or agreement. See TMEP §§1002.01, 1002.02.
To determine whether a particular country has a treaty with the United States that provides for the benefit that the applicant is claiming under §44, examining attorneys should consult Appendix B of this manual. Appendix B lists the members of the Paris Convention, Inter-American Convention, Buenos Aires Convention, World Trade Organization, European Union ("EU"), and certain countries entitled to reciprocal treatment under other international agreements, as well as websites where examining attorneys can obtain updated information about these treaties or agreements.
Some EU member states maintain special relationships with overseas countries and territories (OCTs), which include Aruba, Bonaire, Curaçao, Saba, St-Eustatius, St-Maarten, New Caledonia, French Polynesia, Wallis et Futuna, Saint-Pierre et Miquelon, and Mayotte. Generally, these OCTs are not parties to a relevant treaty or agreement with the United States, nor do they extend reciprocal rights to U.S. nationals by law, as required by Trademark Act Section 44. Therefore, if the applicant’s country of origin, or the country that issued the foreign registration, is one of these OCTs, the application is not entitled to priority under §44(d) or registration under §44(e) unless they fall under one of the exceptions below. See 15 U.S.C. §1126(b), (d), (e); TMEP §§1002.01, 1002.02.
Note, however, that citizens of British overseas territories and Crown Dependencies are also citizens of the United Kingdom. See GOV.UK, Types of British Nationality, https://www.gov.uk/types-of-british-nationality/british-overseas-territories-citizen (accessed Aug. 2, 2017). Therefore, individuals claiming citizenship in Anguilla, Bermuda, British Antarctic Territory, British Indian Ocean Territory, British Virgin Islands, Cayman Islands, Falkland Islands, Gibraltar, Montserrat. Pitcairn Islands, Saint Helena, Ascension and Tristan da Cunha, South Georgia and the South Sandwich Islands, Turks and Caicos Islands, the Bailiwick of Jersey, the Bailiwick of Guernsey, and the Isle of Man will be considered as having the United Kingdom as one of their countries of origin. However, this exception does not apply to juristic persons. Accordingly, individuals, but not juristic persons, from one of the British overseas territories or Crown Dependencies, are entitled to priority under §44(d) or registration under §44(e) so long as the relevant foreign registration issued from a country that is party to a treaty or agreement with the United States. There is also an exception allowing an applicant from a United Kingdom territory to rely on a United Kingdom registration if the applicant has an address in the United Kingdom or in the Isle of Man. For more information about OCTs, see https://ec.europa.eu/europeaid/regions/octs_en.
In a §44 application or an amendment adding or substituting §44 as a basis, an eligible applicant may rely on an application filed in or registration issued by certain common offices of several states. A "common office of several states" refers to an entity serving as the issuing office for trademark registrations for an established group of countries. Examples include the Benelux Trademark Office, servicing Belgium, The Netherlands, and Luxembourg; and the African Intellectual Property Organization ("OAPI"), which issues registrations covering all member states (i.e., Benin, Burkina-Faso, Cameroon, Central African Republic, Chad, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo).
An applicant may also claim the benefits of §44 based on an application for or registration of an EU trademark if the applicant has a bona fide and effective industrial or commercial establishment in a country or state that is a member of the EU, formerly known as the European Community (EC) or European Economic Community (EEC). See Appendix B for a list of these countries.
Effective January 1, 2021, a citizen of the United Kingdom or a juristic entity organized under the laws of a United Kingdom country or overseas territory may no longer rely on an EU registration to support a §44(e) registration basis unless it can show that the EU is its country of origin. For more information about establishing country of origin for a §44(e) registration basis, see TMEP §1002.04.
On January 1, 2021 the IP Office of the United Kingdom (UKIPO) began automatically issuing a UK trademark registration to replace every active EU trademark registration. The UK trademark registration will retain the original EU trademark filing date as well as the original priority and UK seniority dates. The UKIPO will not issue registration certificates for these trademarks. Instead, it will reflect the new trademark registrations in its electronic records on its website, GOV.UK. If an applicant submitted an active EU registration to support its §44(e) registration basis prior to January 1, 2021, the USPTO will update its electronic records to reflect the UK registration number. If a §44(e) applicant did not previously supply a copy of its active EU registration and is relying on an automatically issued UK trademark registration, the applicant must submit a copy of the trademark registration record found on the UKIPO’s website.
A party who had an EU trademark application that was pending on January 1, 2021 may apply to register the same trademark with the UKIPO. An applicant who files by September 30, 2021 will retain the original EU trademark filing date as well as the original priority and UK seniority dates. For more information about the UKIPO’s trademark policies relating to BREXIT, see https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks#history.
If an eligible applicant filed an application or obtained a registration in a country that is a member of the Paris Convention, Inter-American Convention, World Trade Organization, or European Union, the applicant can claim the benefits of either §44(d) or §44(e) if the applicant meets the requirements of those sections. An eligible applicant may also file under either §44(e) or §44(d) based on an application filed or registration obtained in Taiwan. On the other hand, if the applicant filed an application or obtained a registration in a country that is a member of the Buenos Aires Convention, the applicant may seek registration under §44(e), but may not obtain a priority filing date under §44(d). See Appendix B for additional information.
In the case of agreements not covered in Appendix B, an applicant can establish its eligibility for the benefits of §44 by providing evidence of statutes or agreements establishing reciprocity between the United States and the relevant country. Examining attorneys may also consult sources such as Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2d ed. 2008), available to USPTO employees in the Trademark Law Library, for information about the trademark laws of foreign countries. Additional resources are listed in Appendix B.
See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and §1002.02 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).
To obtain registration under §44(e), the applicant must be the owner of a valid registration from the applicant’s country of origin. Kallamni v. Khan, 101 USPQ2d 1864 (TTAB 2012) (finding that registrant’s shipment of product did not create a bona fide and effective commercial establishment in the European Union, that registrant had not established the European Union as his country of origin, and therefore registrant’s European Union registration could not serve as a basis for registration under §44(e)); TMEP §1002.01. To obtain a priority filing date under §44(d), the applicant’s country of origin must be a treaty country, but the foreign application that is the basis for the priority claim does not have to be filed in the applicant’s country of origin. TMEP §1002.02. An applicant domiciled or organized in the United States may be entitled to registration under §44(e) if the applicant can also claim a country of origin other than the United States. See TMEP §1002.05.
Section §44(c) of the Trademark Act defines the applicant’s country of origin as "the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national." Under this definition, an applicant can have more than one country of origin.
If a §44 applicant is domiciled or incorporated in the country claimed, the examining attorney should presume that the country is the applicant’s country of origin, and should not issue any inquiry about the applicant’s country of origin.
If a §44(d) applicant is not currently domiciled, incorporated, or organized in a treaty country, the examining attorney must require the applicant to establish that it was domiciled, incorporated, or organized, or had a bona fide and effective industrial or commercial establishment, in a treaty country during the six-month priority period beginning at the date of filing of the foreign application. See TMEP §1002.02.
If a §44(e) applicant is not currently domiciled, incorporated, or organized in the country that issued the foreign registration, the examining attorney must require the applicant to establish that the country was its country of origin as of the date of issuance of the foreign registration. In this context, applicant is to be construed broadly, as defined in 15 U.S.C. §1127, to embrace the legal representatives, predecessors, successors, and assigns of the original owner of the foreign application or registration. Thus, an applicant for registration in the United States who is the assignee of a foreign registration, but cannot establish that the country which issued the registration was its country of origin as of the date of the conveyance or is its country of origin as of the date of the filing of the U.S. application, may still claim the benefit of registration under §44(e). In such a case, the requirement that the "applicant" be the owner of a valid registration from its country of origin was perfected by applicant's predecessor in interest. However, under such circumstances, the applicant must establish that it is otherwise entitled to the benefits of Section 44(b), i.e., 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).
Generally, a written statement by the applicant or the applicant’s attorney that the applicant has had a bona fide and effective industrial or commercial establishment in the relevant country during the six-month priority period beginning at the date of filing of the foreign application (for §44(d) applicants), or as of the date of issuance of the foreign registration (for §44(e) applicants), will be sufficient to establish that the country is the applicant’s country of origin. This statement does not have to be verified. If a §44(d) applicant establishes its country of origin by submitting this statement, and later perfects its §44 basis by submitting a foreign registration issued by the same country, it is not necessary to require another statement as to the foreign registration.
If the application is otherwise eligible for approval for publication, or in condition to be allowed for registration on the Supplemental Register, the examining attorney may attempt to contact the applicant by telephone or email to obtain the statement. If the examining attorney is unable to reach the applicant by telephone or email, he or she must issue an Office action. If the applicant responds by telephone or email, the examining attorney must issue an examiner’s amendment to enter the statement into the record.
If any evidence in the record contradicts the applicant’s assertion that it has a bona fide and effective industrial or commercial establishment in the relevant country, the examining attorney must require the applicant to set forth the specific circumstances which establish that the applicant maintains a bona fide and effective industrial or commercial establishment in the country. Relevant factors include the presence of production facilities, business offices, and personnel.
The presence of an applicant’s wholly owned subsidiary in a country does not, by itself, establish country of origin. See In re Aktiebolaget Electrolux, 182 USPQ 255 (TTAB 1974) . The fact that the applicant is wholly owned by a foreign company does not establish country of origin. See Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006) .
The sale of goods or services outside the United States through related companies or licensees does not create a bona fide commercial establishment and thus does not establish country of origin. Id.; see also Ex parte Blum, 138 USPQ 316 (Comm’r Pats. 1963) (country of origin cannot be established by relying on contractual relationships with a licensee in another country).
The United States, by definition, is not a country that has a treaty with the United States. Therefore, the term "country of origin" in §44(b) and (c) means a country other than the United States. In re Fisons Ltd., 197 USPQ 888 (TTAB 1978) ; see TMEP §1002.05.
See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and §1002.02 and §1003.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).
Section 44(b) of the Trademark Act provides that, "Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section . . . ."
Section 44(i) of the Act provides that "[c]itizens or residents of the United States shall have the same benefits as are granted by this section to persons described in subsection [44](b) . . . ." However, §44(i) does not provide an independent basis for a U.S. applicant to register a mark under §44(e). See In re Pony Int’l Inc., 1 USPQ2d 1076 (Comm’r Pats. 1986).
The United States, by definition, is not a country that has a treaty with the United States. Therefore, the term "country of origin" in §44(b) means some country other than the United States, and the term "person" in §44(b) means a person who can claim a country of origin other than the United States. See In re Fisons Ltd., 197 USPQ 888 (TTAB 1978) .
An applicant domiciled in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States, even if the other country is not the applicant’s country of origin. See In re ETA Sys. Inc., 2 USPQ2d 1367 (TTAB 1987) ; In re Int'l Barrier Corp., 231 USPQ 310 (TTAB 1986) ; TMEP §1002.02.
However, an applicant domiciled in the United States may not obtain registration under §44(e) unless the applicant is the owner of a registration from an eligible country other than the United States and the applicant can establish that the foreign country is the applicant’s country of origin. See Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006) ; In re Int'l Barrier Corp., supra; In re Fisons, supra; TMEP §1002.01.
For example, a Texas corporation may assert a priority claim under §44(d) based on ownership of an application in Mexico, regardless of whether Mexico is its country of origin. However, this applicant must also assert a valid basis for registration ( see TMEP §1003.03). The applicant may do so by asserting use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication. The applicant cannot obtain registration in the United States under §44(e) unless the applicant establishes that Mexico is one of its countries of origin.
See TMEP §1002.04 regarding the applicant’s country of origin, and §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides for priority and/or registration based on ownership of a foreign registration.
See also TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and §1002.02 and §1003.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).
Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), provides for a priority filing date to eligible applicants ( see TMEP §1002.02) who have filed an application in a treaty country as defined by §44(b) (see TMEP §1002.03). If an eligible applicant files the U.S. application claiming §44(d) priority within six months of filing the first application to register the mark in a treaty country, the filing date of the first-filed foreign application is the effective filing date of the U.S. application.
The requirements for receipt of a priority filing date under §44(d) for a trademark or service mark application are:
For requirements for the receipt of a priority filing date under §44(d) for collective and certification marks, see TMEP §1303.01(a)(iii) for collective trademark or collective service mark applications, §1304.02(a)(iii) for collective membership mark applications, and §1306.02(a)(iii) for certification mark applications.
The priority filing date also constitutes a constructive date of first use in the United States under 15 U.S.C. §1057(c) (see TMEP §201.02), if the application matures into a registration. See SCM Corp. v. Langis Foods Ltd., 539 F.2d 196, 190 USPQ 288 (D.C. Cir. 1976). Therefore, the priority date cannot be later than the filing date of the U.S. application.
Section 44(d) of the Trademark Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration. See TMEP §1003.03.
In a §44(d) application, both the actual date the application was received in the USPTO and the priority date will appear in the Trademark database.
The application relied upon under §44(d) must be the applicant’s first application filed in any treaty country for the same mark and for the same goods or services. The USPTO will presume that the application identified as the basis for the priority claim was the first filed, unless there is contradictory evidence in the record (e.g., in the application itself or submitted via a Letter of Protest that has been accepted; see TMEP §1715.01 regarding appropriate subjects to be raised in a letter of protest). If the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, the §44(d) priority claim may be based upon a subsequently filed application in the same foreign country or common office of several states. Generally, a written explanation by the applicant or the applicant’s attorney that the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, will be sufficient.
The requirement for the same goods or services means that the identification may not exceed the scope of the identification in the foreign application and must be different from the identification covered by any previous application or registration for the mark in a treaty country. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b). Thus, for example, if evidence in the record indicates that an applicant who owns a French registration for "coats, hats, and ties" subsequently files an EU trademark application with the European Union Intellectual Property Office for "coats, hats, ties, and shoes," and then files a U.S. application within six months seeking a priority filing date for "coats, hats, ties, and shoes" based on the EU trademark application, the §44(d) priority claim would be valid only as to "shoes" because the EU trademark application was not the first filed in a treaty country for "coats, hats, and ties." Note, however, that if the foreign application that formed the basis for the French registration was itself filed within six months of the filing date of the U.S. application, the French application may serve as a basis for priority for the "coats, hats, and ties" in the U.S. A single U.S. application may claim priority for different goods and services on the basis of different foreign applications for the same mark as long as all foreign applications claimed were the first-filed for the identified goods/services and were filed no earlier than six months prior to the U.S. application filing date.
If the examining attorney determines that the application relied on was not the first filed in any treaty country as to some or all of the goods/services, the examining attorney must advise the applicant that it is not entitled to priority as to the relevant goods/services. If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect a basis for any goods/services not entitled to priority before the application can be approved for publication or for registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and §806.03 regarding amendment of the basis.
If the applicant is not entitled to priority as to any goods/services, the examining attorney must ensure that the priority claim is deleted from the Trademark database. If the applicant is entitled to priority as to some, but not all, of the goods/services, the examining attorney must ensure that the identification in the Trademark database indicates those goods/services that have priority. See TMEP §806.02(a). The examining attorney must also conduct a new search of USPTO records for conflicting marks as to any goods/services not entitled to priority.
An applicant must file a claim of priority within six months after the filing date of the foreign application. 15 U.S.C. §1126(d)(1); 37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5); Paris Convention Article 4(C)(3). The applicant can submit the priority claim after the filing date of the U.S. application, as long as the claim of priority is submitted within six months of the foreign filing and the claimed priority date is earlier than the filing date of the U.S. application.
Example: If an eligible applicant files in France on December 6, 2011, and in the United States on January 12, 2012, the applicant can add a priority claim to the United States application on or before June 6, 2012, if the applicant meets the requirements of §44(d). The applicant cannot add a priority claim to the U.S. application after June 6, 2012.
If an applicant claims priority under §44(d), but does not specify the filing date of the foreign application, the examining attorney must require that the applicant specify the date of the foreign filing.
If the applicant submits a claim of priority more than six months after the date of the foreign filing, the examining attorney must advise the applicant that it is not entitled to priority. See 15 U.S.C. §1126(d); 37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5). If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect an acceptable basis before the application can be approved for publication or for registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and §806.03 regarding amendment of the basis. The examining attorney should ensure that the priority claim is deleted from the Trademark database, and should conduct a new search of USPTO records for conflicting marks.
If the priority period ends on a Saturday, Sunday, or Federal holiday within the District of Columbia, the priority claim may be filed no later than the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia. Paris Convention Article 4(C)(3); 35 U.S.C. §21(b); 37 C.F.R. §2.196.
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before an application may be approved for publication, or allowed for registration on the Supplemental Register, the applicant must establish a basis for registration under §1(a), §1(b), or §44(e) of the Act. See 37 C.F.R. §2.34(a)(4)(iii). See TMEP §1002.02 regarding applications that are entitled to a priority filing date under §44(d), but are not entitled to registration under §44(e) because the foreign application was filed in a treaty country that is not the applicant’s country of origin.
An applicant may claim more than one basis for registration (i.e., §44(e) in addition to §1(a) or §1(b)). If the applicant claims a §1(b) basis, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ) before the mark can be registered. See TMEP §806.01(b) regarding the requirements for a §1(b) basis and §§1004-1004.02 regarding the requirements for registration under §44(e).
A §44(d) applicant may not assert a basis under §66(a) of the Trademark Act, based on an extension of protection of an international registration to the United States. See 37 C.F.R. §§2.34(b), 2.35(a).
