A §44 applicant may assert that a mark has acquired distinctiveness under 15 U.S.C. §1052(f) if the applicant establishes that the mark has become distinctive of applicant's goods or services in commerce in the same manner that any other applicant must. See 37 C.F.R. §2.41. For these purposes, the applicant may not rely on use other than use in commerce that may be regulated by the U.S. Congress, that is, the applicant may not rely on use solely in a foreign country or between two foreign countries. See TMEP §1212.08 and cases cited therein for further information about claims of acquired distinctiveness in §44 applications. See also TMEP §1212 for general information regarding the three basic types of evidence that may be used to establish acquired distinctiveness for trademarks, service marks, collective marks, and certification marks.
Applicants filing under §44 must comply with the drawing requirements of 37 C.F.R. §2.51 through §2.54. See TMEP §§807-807.18 regarding drawings.
The drawing of the mark must be "a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the country of origin of the applicant." 37 C.F.R. §2.51(c); TMEP §807.12(b).
The "substantially exact representation" standard is construed narrowly. Only slight, inconsequential variations between the mark in the U.S. application and the mark shown in the foreign registration are permitted. In re Hacot-Colombier, 105 F.3d 616, 618, 41 USPQ2d 1523, 1525 (Fed. Cir. 1997); In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995) ; United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481, 1484 (TTAB 1988). For example, non-material informational matter such as net weight or contents may be deleted. Beyond such limited exceptions, however, any difference between the mark on the drawing and the mark in the foreign registration requires the examining attorney to refuse registration. In re Hacot-Colombier, 105 F.3d at 619, 41 USPQ2d at 1525.
If the foreign registration shows a series of marks, the mark on the drawing in the U.S. application must be a substantially exact representation of one of the marks depicted in the foreign registration. See TMEP §1011.02 regarding only one mark per application.
The standard for determining whether the mark in the drawing agrees with the mark in the foreign registration is stricter than the standard used to determine whether specimens support use of a mark in an application under §1 of the Trademark Act. In United Rum Merchants, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44 applications represent an exception to the use requirements of the Act, and that this exception should be construed narrowly to ensure that a foreign applicant cannot obtain a registration in the United States of matter that could not have been registered in the foreign country. United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d at 1483-84.
If the mark in the foreign registration is in standard characters, the mark in the U.S. application must also be in standard characters. If the foreign registration certificate does not indicate that the mark is in standard characters (or the legal equivalent), the examining attorney must inquire whether the foreign registration includes a claim that the mark is in standard characters. The applicant must either submit an affirmative statement that the foreign registration includes a claim that the mark is in standard characters (or the legal equivalent), or delete the standard character claim in the U.S. application. See TMEP §807.03(f) for further information. See also Appendix E, which lists countries that register marks in standard characters or the equivalent.
Likewise, if the mark in the foreign registration is in special form, the drawing of the mark in the U.S. application must appear in the same special form. If the mark in the foreign registration shows color, the applicant must submit a color photocopy of the foreign registration. All claims of color made in the foreign registration must also be made in the U.S. application. The applicant must also comply with all requirements for a color drawing of the mark. See 37 C.F.R. §2.52(b)(1) and TMEP §§807.07-807.07(g) regarding the requirements for claiming color.
If the foreign registration is not issued in color, the examining attorney may require evidence to establish that a colored mark in a U.S. application is a substantially exact representation of the mark in the foreign registration. For example, the examining attorney may require evidence of the foreign country’s procedure for designating color when the foreign registration does not reflect the colors shown in the U.S. application.
If a §44 application is based on a foreign registration that depicts the mark in color, but no claim of color is made in the registration document, the examining attorney must inquire whether the foreign registration includes a claim of color(s) as a feature of the mark. The applicant must either: (1) submit an affirmative statement that color is claimed as a feature of the mark in the foreign registration; or (2) submit a statement that although the mark is registered in its country of origin featuring a color depiction of the mark, no claim of color is made in that registration. If the examining attorney determines that the color is a non-material element of the drawing, the applicant may be given the option of submitting a black-and-white drawing. See TMEP §807.07(b).
The mark on the drawing in the U.S. application may not be a translation or transliteration of the mark in the foreign registration.
If the U.S. application is based on both a foreign registration and use in commerce, the mark on the drawing in the U.S. application must not only be a substantially exact representation of the mark in the foreign registration, but also may not differ in a material way from the mark shown on the specimen(s) of record. See TMEP §§807.12(b), 807.14-807.14(f).
If the foreign application or registration covers a series of distinct marks, the applicant must file separate applications in the United States to register each of the marks the applicant wishes to register in the United States. For example, some countries permit registration of several versions of a mark in a single application. In the United States, separate applications are required. The drawing in the U.S. application must show only one mark, which must be a substantially exact representation of one of the marks in the foreign registration. 37 C.F.R. §2.52; TMEP §§807.01, 807.12(b), 1011.01.
Section 44 applicants often try to amend the mark in the U.S. application to overcome an objection that the mark in the drawing does not agree with the mark in the foreign registration. Amendments to drawings in §44 applications are governed by 37 C.F.R. §2.72(c). An applicant cannot amend the drawing in the U.S. application to conform to the mark in the foreign registration if the amendment would result in a material alteration of the mark on the drawing submitted with the original application in the United States. In re Hacot-Colombier, 105 F.3d 616, 41 USPQ2d 1523 (Fed. Cir. 1997); In re Wine Soc'y of Am. Inc., 12 USPQ2d 1139 (TTAB 1989) . Thus, when a §44 applicant proposes to amend its drawing, the examining attorney must consider: (1) whether the proposed amendment of the drawing would result in a material alteration of the mark on the original drawing; and (2) whether the proposed amendment would result in a mark that is a substantially exact representation of the mark in the foreign registration. In In re Larios S.A., 35 USPQ2d 1214, 1216 (TTAB 1995), the Trademark Trial and Appeal Board held that the mark "GRAN VINO MALAGA LARIOS" and design on the drawing originally filed with the U.S. application was not a substantially exact representation of the mark "VINO DE MALAGA LARIOS" with a similar design in the foreign registration; however, the Board found that amendment of the drawing to conform to the foreign registration was not a material alteration within the meaning of 37 C.F.R. §2.72. The Board noted that "[t]he material alteration test . . . is not quite as rigorous as the substantially exact representation standard and thus allows for a bit more leeway or flexibility with respect to . . . amendment of the drawing . . . ." In re Larios S.A., 35 USPQ2d at 1217. See TMEP §§807.14-807.14(f) regarding material alteration.
If the foreign application or registration depicts several views of a three-dimensional mark, the examining attorney must require the applicant to comply with 37 C.F.R. §2.52(b)(2) and submit an acceptable drawing that depicts a single rendition of the mark. See generally TMEP §§807-807.18 regarding drawings. In lieu of submitting a single-rendition drawing, the applicant may petition the Director, pursuant to 37 C.F.R. §2.146(a)(5), to waive the requirement and accept a drawing featuring multiple views of the mark. See TMEP Chapter 1700 regarding petitions to the Director.
In all such cases, the applicant must indicate that the mark is three-dimensional. 37 C.F.R. §2.52(b)(2); TMEP §807.10. To depict the commercial impression created by use of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the object or location in which the mark appears. The applicant must also use broken lines to show matter not claimed as part of the mark. For any drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must include a written description of the mark and explain the purpose of the broken lines, e.g., by indicating that the matter shown by the broken lines is not a part of the mark and that it serves only to show the position of the mark. 37 C.F.R. §2.52(b)(4); TMEP §807.08.
With respect to marks that include a two-dimensional design, color, words, letters, or numbers, or a combination thereof, in a particular font, style, size, or color, applicant must submit a special form drawing and a description of the mark. 37 C.F.R. §§2.37, 2.52(b), 2.52(b)(5); TMEP §807.04(b). These requirements apply to marks that feature animated elements or combine image and sound, including multimedia, motion, and holograms, as such marks are capable of being represented visually. If the foreign application or registration does not include a graphic representation or description of a non-traditional mark that features visually representable elements, the applicant will be required to submit a copy of the electronic reproduction of the mark of record in the foreign intellectual property office. 37 C.F.R. §2.61(b). For example, if the true copy of the foreign registration features a URL address of the location of an electronic file depicting the reproduction on the foreign office’s website, the applicant should include with the U.S. application an electronic copy that is a substantially exact representation of the mark for which registration is sought in the United States. See 37 C.F.R §2.51(c). The reproduction must be submitted through TEAS in an electronic file in .wav, .wmv, .wma, .mp3, .mpg, or .avi format and should not exceed 5MB in size. The examining attorney will compare the contents of the submitted electronic file with the copy located on the foreign office’s website for consistency between the marks and accuracy of the description of the mark. If the submitted file is not a substantially exact representation of the mark depicted on the foreign office’s website, the examining attorney will require submission of an electronic file that does depict a substantially exact representation. If the description of the mark does not adequately convey the commercial impression of the mark, the examining attorney must require the applicant to amend the description. See TMEP §808.03(c)(i). The description of a mark that features a combination of audio, visual, and/or motion elements, or that consists of a hologram, must be published in the Trademark Official Gazette and included on the certificate of registration to give adequate constructive notice to third parties as to the nature of the claimed elements of the mark.
With respect to sound only, scent, and other non-visual marks, an applicant is not required to submit a drawing, but must submit a detailed description of the mark. TMEP §807.09. If the foreign registration includes a visual reproduction, such as a musical staff depicting the notes comprising a musical sound mark or waveform depiction of a non-musical sound, the U.S. application need not include such a drawing. As the drawing of the mark must be a substantially exact representation of the mark in the foreign registration, and the description of the mark defines the mark sought to be registered in a non-visual mark, the description of the mark in the U.S. application must be substantially comparable to any description, sound file, or visual depiction of the mark in the foreign application or registration. 37 C.F.R. §§2.51(c), 2.52(e). If the foreign registration does not include a mark description, but features a URL address of the location of an electronic file featuring a recording of the sound on the foreign office’s website, the applicant should include with the U.S. application an electronic copy that is a substantially exact representation of the mark for which registration is sought in the United States. See 37 C.F.R. §2.51(c). The applicant may include with the application, or may be required by the examining attorney to submit, additional electronic files that may be reasonably necessary to the proper examination of the application. See 37 C.F.R. §2.61(b).
The identification of goods and services in a §44 application must comply with the same standards that govern other applications. See TMEP §1402.01(b) for more information about the identification of goods or services in a §44 application. See also TMEP §1304.02(c) for information regarding the identification in a collective membership mark application and TMEP §1306.02(c) regarding the identification in a certification mark application.
If the U.S. application is based on §44, the identification of goods and services covered by the §44 basis may not exceed the scope of the goods and services identified in the foreign application or registration. 37 C.F.R. §2.32(a)(6); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989) ; In re Löwenbräu München, 175 USPQ 178 (TTAB 1972) .
Requirement for Representation of Non-U.S.-domiciled Applicants. An applicant whose domicile is not located within the United States or its territories must be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory (a qualified U.S. attorney). 37 C.F.R. §2.11(a); TMEP §601.
Attorney Identification Information Required. If the applicant is represented by an attorney qualified under 37 C.F.R. §11.14 or is required to appoint such an attorney due to its foreign domicile, an applicant must provide the individual attorney’s name, postal address, email address, and bar information. See 37 C.F.R. §§2.17(b)(3), 2.18(c), 2.22(a)(20), 2.32(a)(4). See TMEP §602.01(a) regarding the requirement for attorney identification information.
Examination. For non-U.S. domiciled applicants, the first Office action will generally include requirements to appoint a qualified U.S. attorney and to provide his or her bar information and postal and email addresses, as well as any other refusals and/or requirements. See 37 C.F.R. §§2.11(a), 2.23(b); TMEP §601.01(a). See TMEP §601.01(a) for more information regarding the examination procedure for applicants with a domicile outside of the United States and its territories and requiring such applicants to appoint a qualified U.S. attorney and §602 regarding persons authorized to practice before the USPTO in trademark matters.
SeeTMEP §1904.01(i) regarding the requirement for representation of non-U.S.-domiciled §66(a) applicants.
See TMEP §1006 regarding designation of a domestic representative when filing an assignment and §610 regarding designation of a domestic representative for applicants not domiciled in the United States.
A §44 applicant may apply to register a mark on the Supplemental Register, and a §44 applicant may amend an application from the Principal Register to the Supplemental Register without filing any allegation of use. It is not necessary to change the application filing date after an amendment to the Supplemental Register in a §44 application. See TMEP §1008 regarding the requirement for an allegation of the applicant’s bona fide intention to use the mark in commerce in a §44 application.
Once issued, the U.S. registration issuing from a §44 application exists independent of the underlying foreign registration and is subject to all provisions of the Trademark Act that apply to all other registrations, such as affidavits of use, renewals, amendments under 15 U.S.C. §1057(e), assignments, and similar matters. 15 U.S.C. §1126(f); see Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Exxon Corp. v. Oxon Italia S.p.A., 219 USPQ 907 (TTAB 1982); Reynolds Televator Corp. v. Pfeffer, 173 USPQ 437 (TTAB 1972) .
An international registration issued by the International Bureau of the World Intellectual Property Organization (IB) can be the basis for a §44(e) application only if the international registration shows that there is an extension of protection of the international registration to applicant’s country of origin. See TMEP Chapter 1900 regarding international registration. A request for an extension of protection of the international registration to applicant’s country of origin is not sufficient.
An applicant should submit a copy of the registration for the extension of protection (or certificate of extension of protection) issued by the national trademark office in the applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii). If the applicant’s country of origin does not issue registrations for extensions of protection or certificates of extension of protection, the applicant may submit a copy of the international registration, showing that protection of the international registration has been extended to applicant’s country of origin. A copy of a request for an extension of protection of the international registration to applicant’s country of origin is not sufficient.
If the grant of protection, registration, or certificate of extension of protection issued by the designated trademark office of the applicant’s country of origin does not specify goods/services for which protection has been granted, the applicant should submit both an extract of the International Register issued by WIPO that lists the goods/services of the international registration and the document issued by the designated trademark office to establish the scope of protection of the §44(e) application. A user-generated printout from the WIPO database is not sufficient.
If the applicant is not domiciled or incorporated in the relevant country, the examining attorney must require the applicant to establish that the country is its country of origin. See TMEP §1002.04.
The applicant must meet all the requirements of the Trademark Act and the Trademark Rules of Practice for §44(e) applications. The requirements for §66(a) applications are not applicable.
The identification of goods/services covered by the §44(e) basis may not exceed the scope of the goods/services identified in the registered extension of protection in the applicant’s country of origin. 37 C.F.R. §2.32(a)(6); TMEP §1012.
An extension of protection of an international registration may not be the basis for a §44(d) application, because neither the international application nor the request for extension of protection is the first application filed in a treaty country for the same mark for the same goods or services. 15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4)(i)(A)-(B); TMEP §1003.01. The basic application or basic registration upon which the international registration is based was likely the first-filed application.
If an applicant wants to base a §44(e) application on the basic registration that was the basis for the international registration, the applicant must submit a copy of the basic registration issued by the Office of Origin, i.e., the country or intergovernmental organization who issued the registration which provided the basis for the international registration (see TMEP §1901 regarding the Office of Origin). The applicant cannot submit the international registration, because an international registration does not provide protection in the territory of the Contracting Party whose office is the Office of Origin. Madrid Protocol Article 3 bis.
