TMEP § 819.02(c)(iii)
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3) for trademark and service mark applications (see TMEP §806.01(d)), §2.44(a)(4)(iii) for collective trademarks, collective service marks, and collective membership marks (see TMEP §1303.01(a)(iv) for collective trademarks and collective service marks and §1304.02(a)(iv) for collective membership marks), and §2.45(a)(4)(iii) for certification marks (see TMEP §1306.02(a)(iv)).
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3). See also TMEP §806.01(d).
The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. 37 C.F.R. §2.34(a)(3)(ii). If the foreign registration is not in the English language, the applicant must submit a translation. Id.
The trademark electronic filing system will require the insufficient information fee if applicant does not include an attachment to support the §44(e) basis.
If the insufficient information fee was not required at the time of filing, the following are examples of situations where the insufficient information fee will be required during examination:
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the insufficient information fee.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. In these circumstances, the application does not meet the base application requirements.
Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.34(a)(3)(iii).
Bona Fide Intention to Use the Mark in Commerce. The application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §2.34(a)(3)(i). The insufficient information fee is required if the verified statement is omitted. See 37 C.F.R. §2.22(b). See TMEP §819.02(f) regarding verification.
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.44(a)(4)(iii). See also TMEP §1303.01(a)(iv) for the requirements for establishing a basis under §44(e) for collective trademarks and collective service marks and §1304.02(a)(iv) for the requirements for establishing a basis under §44(e) for collective membership marks.
The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. 37 C.F.R. §2.44(a)(4)(iii)(A). If the foreign registration is not in the English language, the applicant must submit a translation. Id.
The trademark electronic filing system will require the insufficient information fee if applicant does not include an attachment to support the §44(e) basis.
If the insufficient information fee was not required at the time of filing, the following are examples of situations where the insufficient information fee will be required during examination:
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the insufficient information fee.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. In these circumstances, the application does not meet the base application requirements.
Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.44(a)(4)(iii)(A).
Bona Fide Intention to Use the Mark in Commerce. For collective trademarks and collective service marks, the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(iii)(B). The insufficient information fee is required if the verified statement is omitted. See 37 C.F.R. §2.22(b).
For collective membership marks, the applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the collective membership organization of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.22(a)(6), 2.44(a)(4)(iii)(B). The insufficient information fee is required if the verified statement is omitted. See 37 C.F.R. §2.22(b).
See TMEP §819.02(f) regarding verification.
The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.45(a)(4)(iii). See also TMEP §1306.02(a)(iv).
Statement Specifying What Applicant Will be Certifying. An applicant must submit a statement specifying what the applicant will be certifying about the goods and/or services in the application. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(iii)(B). An insufficient information fee is required if this statement is omitted. 37 C.F.R. §2.22(b). If the application includes a certification statement, no insufficient information fee will be required if the certification statement is later amended to provide greater specificity.
Statement that Applicant Will Not Engage in Production or Marketing of the Goods and/or Services. An applicant must submit a statement that the applicant will not engage in the production or marketing of the goods and/or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(iii)(B). An insufficient information fee is required if this statement is omitted. 37 C.F.R. §2.22(b).
Copy of Foreign Registration Certificate. The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect. 37 C.F.R. §2.45(a)(4)(iii)(A). If the foreign registration is not in the English language, the applicant must submit a translation. Id.
The trademark electronic filing system will require the insufficient information fee if applicant does not include an attachment to support the §44(e) basis.
If the insufficient information fee was not required at the time of filing, the following are examples of situations where the insufficient information fee will be required during examination:
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH! The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the insufficient information fee.
Example: The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES. Amending the drawing to match the foreign registration would materially alter the mark on the drawing. In these circumstances, the application does not meet the base application requirements.
Foreign Registration Due to Expire - No Fee Required. No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues. Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.45(a)(4)(iii)(A).
Bona Fide Intention to Use the Mark in Commerce. The application must include a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except authorized users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.22(a)(6), 2.45(a)(4)(iii)(C). The insufficient information fee is required if the verified statement is omitted. 37 C.F.R. §2.22(b). See TMEP §819.02(f) regarding verification.