Section 44 Applications - General

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

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 the trademark electronic filing system 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.

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