In a §44(d) application filed via TEAS, the applicant is asked to specifically indicate that it does not intend to rely on §44(e) as a basis for registration, but wishes only to assert a valid claim of priority. If the applicant does not do so, an intent to rely on §44(e) is presumed and, when filed, the application will include a statement that the applicant intends to rely on §44(e) as a basis for registration.
If, on initial examination of the application, there are no refusals, requirements, or prior pending applications, the examining attorney will suspend action on the application pending receipt of the foreign registration. The suspension notice must include a search clause (see TMEP §704.02).
If, on initial examination, the examining attorney issues any refusals or other requirements, the Office action must also include a requirement that the applicant submit the foreign registration when it becomes available. Depending upon the applicant’s response, the examining attorney will take appropriate action to place the application in condition for approval for publication, allowance for registration on the Supplemental Register, or final action on all other issues, and will then suspend further action pending receipt of the foreign registration. In the notice of suspension, the examining attorney must reference any continued refusals or requirements. See TMEP §716.01.
If, on initial examination, the only other issue is a prior pending application, the examining attorney will suspend action on the application pending receipt of the foreign registration and resolution of the prior pending application. The suspension notice must include a search clause (see TMEP §704.02). If the foreign registration is submitted while the prior pending application is pending, the application will be re-suspended and the suspension letter will state that the foreign registration has been received but will not be examined until the prior pending application either abandons or registers. If the prior pending application abandons before the applicant submits the foreign registration, the examining attorney will re-suspend the application pending receipt of the foreign registration. The suspension letter must state that the prior pending application has abandoned and no longer poses a potential bar to registration. However, if the prior pending application registers before the foreign registration is submitted, the examining attorney will issue a non-final Office action with a §2(d) refusal and a requirement that the applicant submit the foreign registration when it becomes available. If the applicant responds, but the foreign registration cannot yet be provided, the application will be re-suspended. The suspension notice must indicate whether the §2(d) refusal is continued or withdrawn. See TMEP §716.01.
If the TEAS application indicates that the applicant is not relying on §44(e) and no other basis for registration is claimed, the examining attorney must inquire since the application lacks a basis for registration. If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, this inquiry may be made via telephone or email. The following actions should be taken based on the applicant’s response to the inquiry:
If, however, there are other refusals or requirements, or the applicant cannot be reached by telephone or email, the examining attorney must issue an Office action that includes the inquiry regarding whether the applicant intends to rely on §44(e) as a registration basis and note that, if so, the foreign registration is required when it becomes available.
Permitted paper filing. If a permitted paper §44(d) application (see TMEP §301.01) is silent as to whether the applicant intends to rely on §44(e), the USPTO will presume that the applicant intends to rely on §44(e) as a basis for registration and follow the same procedures as for TEAS applications.
If an applicant properly claims §44(d) as a basis for receipt of a priority filing date and asserts §1 as a second basis, the applicant may elect not to perfect the §44 basis and still retain the priority filing date. 37 C.F.R. §2.35(b)(3)-(4). If the TEAS application indicates that the applicant is relying on §44(e) as a basis for registration, the examining attorney must follow the procedures in TMEP §1003.04(a) with respect to the §44(e) basis. If the application indicates that the applicant is not relying on §44(e) as an additional basis for registration and is only asserting §44(d) to receive a priority filing date, the examining attorney must ensure that the Trademark database is updated accordingly. See TMEP §806.02(f) and 806.03(j) regarding the addition or substitution of a §44(e) basis after a mark has been published for opposition.
Permitted paper filing. When a permitted paper application (see TMEP §301.01) is silent as to whether the applicant intends to rely on §44(e) as an additional basis for registration, the examining attorney must inquire as to whether the applicant intends to rely on the §44(e) basis. If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, this inquiry may be made via telephone or email. If the applicant intends to perfect the §44 basis, the examining attorney must enter a Note to the File in the record and suspend the application pending receipt of the foreign registration. If the applicant does not wish to perfect the §44 basis, the examining attorney must issue an examiner’s amendment to this effect. If the applicant cannot be reached by telephone or email, the examining attorney must enter a Note to the File in the record indicating the unsuccessful attempt to contact the applicant and suspend action on the application pending receipt of the foreign registration. The suspension notice must include a search clause (see TMEP §704.02).
If it is necessary to issue an Office action for a paper application that does not specify whether applicant intends to rely on §44(e) as an additional basis, the examining attorney must inquire as to whether the applicant intends to perfect §44 as a second basis for registration and note that, if so, the foreign registration is required when it becomes available. If the response indicates that the applicant is not relying on §44(e) as an additional basis for registration, the examining attorney will approve the application for publication or allowance on the Supplemental Register, or will issue a final action, as appropriate. If the response indicates that the applicant intends to rely on §44(e) as a second basis, or fails to indicate whether the applicant intends to perfect the §44 basis, the examining attorney will suspend further action pending submission of the foreign registration and, if appropriate, resolution of the prior pending application. In the notice of suspension, the examining attorney must reference any refusals or requirements that are continued. See TMEP §716.01.
See TMEP §1003.04(a) with respect to suspension procedures when there is a prior pending application.
Examining attorneys must issue inquiries as to the status of the foreign application in applications that have been suspended for more than six months. See TMEP §716.05. If the applicant does not respond or request an extension of time to respond to this inquiry within three months of the issuance date, the application will be abandoned for failure to respond to an Office action. See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a); TMEP §718.02. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.
If the foreign application has not yet matured to registration, the applicant should submit a statement to that effect. This statement may be submitted using the TEAS Response to Suspension Inquiry or Letter of Suspension form in a formal response to the suspension inquiry or by timely notifying the examining attorney in an informal communication by telephone or email. In such case, the examining attorney will issue a new notice of suspension. If the statement is provided through informal communications, the examining attorney must also enter a Note to the File in the record that indicates the applicant’s response. See TMEP §709.05.
If the applicant states that the foreign registration has issued, but does not provide a copy of the certificate, the examining attorney must issue an Office action requiring a copy, unless the applicant has established that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP § §716.02(b), 1004.01.
To determine priority for publication under 37 C.F.R. §2.83, an application filed in the United States under §44(d) will be treated as if it were filed in the United States on the same date as the filing in the foreign country. The §44(d) application will receive priority over any application filed after the §44(d) applicant’s priority filing date that might otherwise be a possible bar to registration under §2(d) of the Trademark Act due to a likelihood of confusion. See TMEP §§1208-1208.03(c) regarding conflicting marks in pending applications.
In some cases, another U.S. application filed after the §44(d) applicant’s priority date may proceed to publication or registration because the §44(d) applicant had not yet filed in the United States when the examining attorney searched USPTO records for conflicting marks. If the USPTO learns that a §44(d) application is entitled to priority over another pending application before the other mark registers, the USPTO will take appropriate action to give the §44(d) application the priority to which it is entitled. The §44(d) applicant may bring the priority-date issue to the USPTO’s attention by submitting a letter of protest in the other pending application. See TMEP §1715 regarding letters of protest.
If an examining attorney discovers a conflicting application entitled to priority under §44(d) after taking action in a case, the examining attorney must issue a supplemental action correcting the situation. If the mark has been published, the examining attorney must request jurisdiction before issuing the action, unless a notice of allowance has issued. See TMEP §1504.01 and §1504.04(a) regarding the examining attorney’s jurisdiction.
However, if the conflicting mark has already registered, the USPTO does not act to cancel the registration sua sponte. The §44(d) applicant may seek to cancel the registration by filing a petition for cancellation with the Trademark Trial and Appeal Board.
In some cases, a §44 applicant may have already received, before filing in the USPTO, a foreign registration as a result of the same foreign application upon which the applicant relies for priority under §44(d). This may occur in countries that do not examine applications prior to registration. In this situation, the applicant may file under both §44(d) and §44(e).
An applicant may also claim priority under §44(d) based upon a foreign application, and proceed to registration under §44(e) based upon a different foreign registration. Both foreign countries must be parties to a treaty or agreement with the United States and the foreign registration must be from a country of origin of the applicant. If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis, but may require republication. See TMEP §1004.02.
An applicant may file an application in the United States based on more than one foreign application for different goods or services, or for different classes, if the applicant meets the requirements of §44(d) with respect to each foreign application on which the U.S. application is based. The applicant must specify which goods or services, or which classes, are covered by which foreign application. The mark in each foreign application must be the same mark for which registration is sought in the U.S. application.
If the foreign application relied on under §44(d) is abandoned during the prosecution of the U.S. application, the applicant may amend the application to rely on another basis. See TMEP §806.03. If the applicant met the requirements of §44(d) on the filing date of the U.S. application, the applicant will retain the priority filing date even if the foreign application is abandoned. See37 C.F.R. §2.35(b)(4).
In this situation, the USPTO will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date, unless there is contradictory evidence in the record. See 37 C.F.R. §2.35(b)(3); TMEP §806.03(h).
If an eligible applicant (see TMEP §1002.01) owns a valid registration from the applicant’s country of origin, the applicant may base its U.S. application on that foreign registration under §44(e).
A §44(e) application for a trademark or service mark must meet the following requirements:
An applicant may not file an application under §44(e), or amend an application to add or substitute a §44(e) basis, before the registration in the applicant’s country of origin has issued. An applicant can file under §44(d) within six months after the filing date of an application in the applicant’s country of origin (see TMEP §§1003-1003.08). However, once this six-month priority period has passed, an applicant cannot file an application in the United States based on a pending foreign application.
Section 44(e) of the Trademark Act, 15 U.S.C. §1126(e), requires "a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant." If a copy of the foreign registration is not included with the application as filed, the examining attorney must require submission of a copy of the foreign registration in the first Office action. See 37 C.F.R. §2.34(a)(3)(ii). The copy must show the name of the owner, the mark, and the goods or services for which the mark is registered.
If the applicant submits a copy of the foreign registration, it must be a copy of a document that has been issued to the applicant by or certified by the intellectual property office in the applicant’s country of origin. A photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect, unless accompanied by a certification from the issuing office.
An English translation of a registration from the country of origin by itself is not an acceptable "copy" of the foreign registration. A certification or copy of the registration as issued by the intellectual property office of the country of origin is required, along with an English translation. See 37 C.F.R. §2.34(a)(3)(ii). See TMEP §1004.01(b) regarding translation of foreign registrations.
If an applicant files more than one application in the United States based on the same foreign registration, the applicant must file a copy of the foreign registration (and its English translation, if applicable), in each of the U.S. applications. See 37 C.F.R. §2.193(g).
In a §44(e) application, the examining attorney will not suspend the application pending submission of a copy of the foreign registration, unless the applicant establishes that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). However, the examining attorney may suspend the application pending receipt of proof of renewal of the foreign registration (see TMEP §1004.01(a)).
The foreign registration must be in force at the time the United States issues the registration based on that foreign registration. In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784 (TTAB 2003) ; Marie Claire Album S.A. v. Kruger GmbH & Co. KG, 29 USPQ2d 1792 (TTAB 1993) ; Fioravanti v. Fioravanti Corrado S.R.L., 230 USPQ 36 (TTAB 1986). Appendix B of this manual lists the terms of registration in various foreign countries.
If the record indicates that the foreign registration has expired or will expire before the U.S. registration will issue, the examining attorney must require that an applicant submit a true copy, a photocopy, a certificate of renewal or other certified copy of a proof of renewal from the intellectual property office of the foreign country, or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States, along with an English translation. 37 C.F.R. §2.34(a)(3)(iii). See TMEP §1004.01(b) regarding translation of foreign registrations and renewal documents. Generally, a photocopy of the intellectual property office’s publications or a printout from the intellectual property office’s website is not sufficient to establish that the registration has been renewed in that country and is in full force and effect, unless accompanied by a certification from the issuing office. In the event a foreign intellectual property office ceases issuing a document confirming that a registration has been renewed, the examining attorney will accept a printout or screenshot of the office’s website showing the extended expiration date of the foreign registration when accompanied by a verified statement that the foreign intellectual property office in which the mark is registered does not issue renewal documents. The submitted copy must include the complete URL address and the date the page was accessed. If an applicant’s submission does not comply with these requirements, the examining attorney must require a copy that does comply and advise the applicant of the requirements for submission of acceptable Internet evidence to the record. See TMEP §710.01(b).
Generally, the examining attorney must require proof of renewal if it appears that the foreign registration will expire within six months after the date of approval for publication. If the applicant states that renewal is pending in the foreign country, the examining attorney will suspend the application pending receipt of proof of renewal.
If an applicant submits a certified copy or certification of the foreign registration that is certified by the foreign government agency that issued the foreign registration, the examining attorney should inquire concerning renewal only if the certified copy of the foreign registration indicates that the registration will expire after the date on which the foreign government agency issued the certified copy or certification of the foreign registration. For example, if a certified copy of a foreign registration was issued by the trademark agency in the foreign country on January 5, 2009, and the certified copy indicates that the registration expired on June 1, 2008, no inquiry is necessary. The USPTO presumes that the foreign country would not have issued a certified copy of the registration unless the registration had been renewed. This applies only to a certified copy or certification issued by the foreign trademark agency. If the copy of the registration is not certified by the foreign trademark agency, and the record indicates that the foreign registration will expire before the U.S. registration will issue, the examining attorney must require that the applicant submit a copy of the foreign registration showing that the registration has been renewed.
If the examining attorney determines that the foreign registration is not in force, the examining attorney will refuse registration under §44(e) of the Trademark Act, 15 U.S.C. §1126(e). The applicant may amend the application to claim another basis. See TMEP §806.03 regarding amendments to the basis.
For information about recent changes in the term of registration in a foreign country, examining attorneys may consult resources such as the following, which are available to USPTO employees in the Trademark Law Library: Nanette Norton & Christopher Dolan, Trademark Practice Throughout the World (2020 ed.) and Ethan Horwitz, Horwitz on World Trademark Law (2d ed. 2020). Additional resources are listed in Appendix B.
If the foreign registration, certificate of renewal, or other certification of renewal from the intellectual property office of the foreign country is not in English, the applicant must provide a translation. 37 C.F.R. §2.34(a)(3)(ii)-(iii). The translator should sign the translation, but does not have to swear to the translation.
A U.S. application may be based on more than one foreign registration. The applicant must meet all requirements of the Trademark Act and rules for each foreign registration upon which the U.S. application is based, and must specify which goods/services are covered by which foreign registration.
If a §44 applicant amends an application to rely on a different foreign registration after publication, this is not considered a change in basis. However, if the amendment is acceptable, the application must be republished. See TMEP §1505.03(a) regarding post-publication amendments that require republication.
Section 44 Claimed in Original Application
If an applicant claims §44 as the filing basis in the original U.S. application, or if the applicant omits the basis from the original U.S. application and subsequently claims §44 as the basis, the applicant must be the owner of the foreign application or registration on the filing date of the U.S. application. See In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587 (TTAB 2014); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991) .
Generally, the applicant is not required to submit a copy of the foreign application to receive a priority filing date. See TMEP §1003. However, if other evidence in the record calls into question the applicant’s ownership of the foreign application on the filing date of the U.S. application, the examining attorney must require the applicant to establish its ownership of the foreign application on the date of filing in the United States. For example, if the U.S. application includes a priority claim under §44(d), and the applicant then attempts to perfect its §44 filing basis by submitting a foreign registration showing a different owner name from that of the U.S. applicant, this difference raises a question as to the applicant’s ownership of the underlying foreign application. Therefore, the examining attorney must issue a request for information under §2.61(b), requiring the applicant to establish its ownership of the foreign application on the date of filing in the United States, and advise the applicant that if it did not own the foreign application on the filing date of the U.S. application, the applicant is not entitled to priority and the claim will be deleted. The examining attorney must also refuse registration under §44(e) because the record indicates that the applicant is not the owner of a valid registration in the applicant’s country of origin. See 15 U.S.C. §1126(c), (e); TMEP §1002.01. If the applicant provides proof that it was the owner of the foreign application on the date of filing in the United States, the application will retain the priority filing date. However, the applicant must additionally satisfy the requirements for registration under §44(e).
Proof of ownership must show the applicant for registration in the United States as the owner of the foreign application or registration as of the date of filing in the United States and may consist, for example, of a copy of an assignment document, a statement from the agency administering the trademark register in the foreign country establishing that the applicant was the owner of the foreign application or registration as of the U.S. application filing date, or a printout from the intellectual property office’s website. Note that while a website printout may suffice for purposes of establishing ownership, for purposes of proof of the status of a foreign registration, a printout generally is not acceptable. See TMEP §§1004.01, 1004.01(a). If the transfer of ownership took place before the U.S. application filing date, the §44 basis will be considered valid.
If a §44(d) applicant was not the owner of the foreign application on the U.S. application filing date, the examining attorney must advise the applicant that it is not entitled to priority, ensure that the priority claim is deleted from the Trademark database, and conduct a new search of the USPTO’s records for conflicting marks. TMEP §1002.02.
If a §44(e) applicant was not the owner of the foreign registration on the U.S. application filing date, the examining attorney must refuse registration under §44(e). The applicant may amend the application to claim §1(a) or §1(b) as a basis. See TMEP §§806.03–806.03(l) regarding amendment of the basis.
Section 44 Added to or Substituted for Valid Section 1 Basis
If an application is properly filed based on §1(a) or §1(b), and the applicant later amends the application to add or substitute §44 as a basis, the applicant must be the owner of the foreign application or registration as of the filing date of the amendment adding or substituting a §44 claim of priority or basis for registration. See SARL Corexco v. Webid Consulting Ltd., 110 USPQ2d 1587, 1590-91 (TTAB 2014). Note that the applicant may amend to add a claim of priority under §44(d) only within the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.03 regarding amendments to change the basis.
If the applicant owned the foreign application or registration on the filing date of the amendment, but did not own the foreign application or registration on the filing date of the U.S. application, the applicant will retain the original filing date in the United States, as long as there was a continuing valid basis since the application filing date. See 37 C.F.R. §2.35(b)(3); TMEP §806.03(h).
If the applicant was not the owner of the foreign application on the filing date of an amendment adding a §44(d) priority date, the examining attorney must advise the applicant that it is not entitled to priority and ensure that the priority claim is not entered into the Trademark database. TMEP §1002.02.
If the applicant was not the owner of the foreign registration on the filing date of the amendment adding or substituting a §44(e) basis, the examining attorney must refuse registration under §44(e). The applicant may amend the application to reassert or claim §1(a) or §1(b) as the basis.
See TMEP §§806.03–806.03(l) regarding amendment of the basis and §1006 regarding assignment of §44 applications.
A §44 applicant may assign the foreign application or registration and/or the U.S. application from the original applicant to another party.
Assignee Must Be Eligible for the Benefits of §44
To continue to claim the benefits of §44 after such an assignment, the assignee of the U.S. application must be eligible for the benefits of §44. Karsten Mfg. Corp. v. Editoy, 79 USPQ2d 1783 (TTAB 2006); Nestle Co. v. Grenadier Chocolate Co., 212 USPQ 214 (TTAB 1981) ; In re Fisons Ltd., 197 USPQ 888 (TTAB 1978) . See §1002.01 regarding applicants eligible for registration under §44(e) and TMEP §1002.02 regarding applicants eligible for a priority filing date under §44(d).
To be eligible for registration under §44(e), the assignee must establish that the country that issued the relevant registration is the assignee’s country of origin. TMEP §§1002.01, 1002.04. See also TMEP §1004 regarding the requirements for registration under §44(e).
To be eligible for a priority filing date under §44(d), any non-U.S. assignee must establish that the assignee’s country of origin is a party to an international treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights of priority to U.S. nationals. See TMEP §§1002.02, 1002.03, 1002.04; see also TMEP §1003.
In an application based solely on §44, if the assignee is not entitled to registration under §44(e), the examining attorney must refuse registration under that basis. The applicant may amend the application to claim §1(a) or §1(b) as a basis. In Karsten, supra, the Board held that the assignment of a properly filed §44 application to a party who is not eligible to claim the benefits of §44 does not render the application void, as long as there is a continuing valid basis for registration. See TMEP §806.03 regarding amendment of the basis.
In a §44(d) application, if the assignee is not eligible for a priority filing date (i.e., a non-U.S. applicant whose country of origin is not a party to any convention or treaty as outlined in §44(b)), the examining attorney must advise the assignee that it is not entitled to priority, ensure that the priority claim is deleted from the Trademark database, and conduct a new search of USPTO records for conflicting marks. TMEP §1002.02.
Assignee Does Not Have To Be the Owner of the Underlying Foreign Application or Registration
The Trademark Act requires that an applicant own the underlying application or registration at the time of filing in the United States (or as of the filing date of the amendment adding or substituting §44 as a basis, for an application originally based on §1(a) or §1(b), and later amended to add or substitute §44 as a basis). TMEP §1005. However, if the applicant was the owner of the foreign application or registration on the filing date of the U.S. application (or amendment adding or substituting §44 as a basis), the applicant may assign the U.S. application to another party without assigning the underlying foreign application or registration to that party. See In re De Luxe N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993). Therefore, examining attorneys should not require proof of assignment of the underlying foreign application or registration when an applicant assigns the U.S. application.
Designation of Domestic Representative
If the U.S. application is assigned to a party who is not domiciled in the United States, the assignee may file an appointment of a domestic representative with the assignment of the U.S. application designating the name, email address, and postal address of a person residing in the United States upon whom notices or process in proceedings affecting the mark may be served. 15 U.S.C. §1060(b); 37 C.F.R. §§2.23(b), 3.61.
See TMEP §610 for more information regarding designating a domestic representative for an applicant not domiciled in the United States.
Although §44 exempts eligible applicants from the use requirements of §1 of the Trademark Act, §44 applicants must meet all other requirements for registration set forth in the Trademark Act and relevant rules. Registration in a foreign country does not automatically ensure eligibility for registration in the United States. In re Rath, 402 F.3d 1207, 1214, 74 USPQ2d 1174, 1179 (Fed. Cir. 2005) ("[I]t is impossible to read section 44(e) to require the registration of foreign marks that fail to meet United States requirements for eligibility. Section 44 applications are subject to the section 2 bars to registration . . . ."); In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); Order Sons of Italy in Am. v. Marofa S.A., 38 USPQ2d 1602 (TTAB 1996).
The foreign registration that is the basis for the U.S. application may include disclaimers or may be on a secondary register, equivalent to the Supplemental Register. The U.S. application will be reviewed according to the standards for registrability in the United States, and the examining attorney will not require a disclaimer, amendment to the Supplemental Register, or any other amendment unless it is required under U.S. law and USPTO policy.
A trademark or service mark application filed under §44(d) or §44(e) on either the Principal or the Supplemental Register must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. 37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii). 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), (a)(4)(ii). See TMEP §1101 for additional information about this requirement and §1201.02(b) regarding an application being void if a party filing the application did not have such a bona fide intention.
The allegation of the applicant’s bona fide intention to use the mark in commerce is required even if use in commerce is asserted in the application. See In re Paul Wurth, S.A., 21 USPQ2d 1631 (Comm’r Pats. 1991); see also In re Unisearch Ltd., 21 USPQ2d 1559 (Comm’r Pats. 1991) (requirement for verified statement of bona fide intent to use the mark in commerce held not contrary to Paris Convention). This applies similarly to the verified bona fide intent statements required for collective or certification mark applications where use is also asserted.
For the verified statement required in applications filed under §44(d) or §44(e) for collective and certification marks, see TMEP §1303.01(b)(i) for collective trademark or service mark applications, §1304.02(b)(i) for collective membership mark applications, and §1306.02(b)(i) for certification mark applications.
Although §44 applicants must assert a bona fide intention to use the mark in commerce, §44 applicants are not required to allege use or provide specimens or dates of use prior to registration on either the Principal or Supplemental Register in an application based solely on §44. Crocker Nat'l Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984) . However, if a §44 applicant wishes to assert use in commerce under §1(a) or a bona fide intention to use the mark in commerce under §1(b) as an additional basis, then the applicant must comply with all applicable requirements related to the second basis asserted.
If the applicant provides specimens gratuitously in a §44 application, the examining attorney may refer to the specimens to determine issues unrelated to use, such as whether the mark is merely descriptive.
When the §44 application, as submitted, raises questions concerning the registrability of the mark, the examining attorney may request an explanation, information, literature, or other materials to assist in consideration of the application. 37 C.F.R. §2.61(b); TMEP §814.
