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 applicant's country of origin." 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, 618-619 (Fed. Cir. 1997) ("This regulation requires the United States application to include an almost exact replica of the foreign mark."); In re Larios S.A., Ser. No. 74285865, 1995 TTAB LEXIS 3, at *4, *5 & n.4 (1995) (noting the "failure to apply strictly the substantially exact representation standard would result in a perversion of Section 44(e)"); see also United Rum Merchs. Ltd. v. Distillers Corp. (S.A.) Ltd., 1988 TTAB LEXIS 47, at *7-10 (1988) (noting the drawing in a U.S. application must be "materially the same as the mark in the foreign registration"). For example, non-material informational matter such as net weight or contents may be deleted. In re Hacot-Colombier, 105 F.3d at 619 (citing United Rum Merchs. Ltd. v. Distillers Corp. (S.A.) Ltd., 1988 TTAB LEXIS 47, at *9-10). 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. Id.

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 Trademark Act §1, 15 U.S.C. §1051. In United Rum Merchants Ltd., 1988 TTAB LEXIS 47, at *7-10, the Trademark Trial and Appeal Board reasoned that a stricter standard is appropriate in §44 cases because §44, 15 U.S.C. §1126, 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.

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 or color descriptions 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 must require evidence to establish that a mark in color or claiming or describing color in a U.S. application is a substantially exact representation of the mark shown in the foreign registration. In such case, applicant will be required to provide evidence that the colors shown in the mark in the U.S. drawing are in the mark in the foreign registration and that those colors appear in the same location in the U.S. mark and foreign registration. This evidence may include a written statement from the intellectual property office of the foreign country that the mark in the foreign registration is in color and specifies the colors claimed and their location in the mark in the foreign registration.

If the foreign registration depicts the mark in color with no claim or description of color, or the foreign registration does not depict the mark in color but claims or describes color as a feature of the mark, then the examining attorney must inquire whether the foreign registration includes the color(s) shown or claimed or described as features of the mark. If the mark in the foreign registration is not intended to be in color, the examining attorney must require evidence to establish that a non-color mark in a U.S. application is a substantially exact representation of the mark shown in color or claimed or described in the foreign registration. In such case, the applicant will be required to submit either (1) a statement from the foreign intellectual property office that the mark in the foreign registration is not in color, or (2) a copy of the foreign intellectual property office's written policy regarding how color and/or color claims or descriptions appear in issued registrations. 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 in the U.S. application. TMEP §807.07(b); see TMEP §§807.12(b), 1011.03.

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).