Establishing Country of Origin

To obtain registration under §44(e), the applicant must be the

owner of a valid registration from the applicant’s country of origin.

Kallamni v. Khan

, 101 USPQ2d

1864 (TTAB 2012) (finding that registrant’s shipment of product did not create a bona fide and

effective commercial establishment in the European Union, that registrant had not

established the European Union as his country of origin, and therefore registrant’s European

Union registration could not serve as a basis for registration under §44(e));

TMEP §1002.01

. To

obtain a priority filing date under §44(d), the applicant’s country of origin must be a

treaty country, but the foreign application that is the basis for the priority claim does

not have to be filed in the applicant’s country of origin.

TMEP §1002.02

. An applicant domiciled or

organized in the United States may be entitled to registration under §44(e) if the applicant

can also claim a country of origin other than the United States.

See

TMEP §1002.05

.

Section §44(c) of the Trademark Act defines the applicant’s

country of origin as “the country in which he has a bona fide and effective industrial or

commercial establishment, or if he has not such an establishment, the country in which he is

domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of

this section, the country of which he is a national.”  Under this definition, an applicant

can have more than one country of origin.

If a §44 applicant is domiciled or incorporated in the country

claimed, the examining attorney should presume that the country is the applicant’s country

of origin, and should not issue any inquiry about the applicant’s country of origin

described in paragraph (b) of

this section, the country of which he is a national.”  Under this definition, an applicant

can have more than one country of origin.

If a §44 applicant is domiciled or incorporated in the country

claimed, the examining attorney should presume that the country is the applicant’s country

of origin, and should not issue any inquiry about the applicant’s country of origin.

If a §44(d) applicant is not currently domiciled,

incorporated, or organized in a treaty country, the examining attorney must require the

applicant to establish that it was domiciled, incorporated, or organized, or had a bona fide

and effective industrial or commercial establishment, in a treaty country during the

six-month priority period beginning at the date of filing of the foreign application.

See

TMEP §1002.02

.

If a §44(e) applicant is not currently domiciled,

incorporated, or organized in the country that issued the foreign registration, the

examining attorney must require the applicant to establish that the country was its country

of origin as of the date of issuance of the foreign registration. In this context, applicant

is to be construed broadly, as defined in

15 U.S.C.

§1127

, to embrace the legal representatives, predecessors, successors,

and assigns of the original owner of the foreign application or registration. Thus, an

applicant for registration in the United States who is the assignee of a foreign

registration, but cannot establish that the country which issued the registration was its

country of origin as of the date of the conveyance or is its country of origin as of the

date of the filing of the U.S. application, may still claim the benefit of registration

under §44(e). In such a case, the requirement that the "applicant" be the owner of a valid

registration from its country of origin was perfected by applicant's predecessor in

interest

y which issued the registration was its

country of origin as of the date of the conveyance or is its country of origin as of the

date of the filing of the U.S. application, may still claim the benefit of registration

under §44(e). In such a case, the requirement that the "applicant" be the owner of a valid

registration from its country of origin was perfected by applicant's predecessor in

interest. However, under such circumstances, the applicant must establish that it is

otherwise entitled to the benefits of Section 44(b), i.e., the applicant’s country of origin

must be a party to a treaty or agreement with the United States that provides for

registration based on ownership of a foreign registration or must extend reciprocal

registration rights to nationals of the United States.

15 U.S.C.

§1126(b)

.

Generally, a written statement by the applicant or the

applicant’s attorney that the applicant has had a bona fide and effective industrial or

commercial establishment in the relevant country during the six-month priority period

beginning at the date of filing of the foreign application (for §44(d) applicants), or as of

the date of issuance of the foreign registration (for §44(e) applicants), will be sufficient

to establish that the country is the applicant’s country of origin. This statement does not

have to be verified. If a §44(d) applicant establishes its country of origin by submitting

this statement, and later perfects its §44 basis by submitting a foreign registration issued

by the same country, it is not necessary to require another statement as to the foreign

registration.

If the application is otherwise eligible for approval for

publication, or in condition to be allowed for registration on the Supplemental Register,

the examining attorney may attempt to contact the applicant by telephone or email to obtain

the statement. If the examining attorney is unable to reach the applicant by telephone or

email, the examining attorney must issue an Office action

egistration.

If the application is otherwise eligible for approval for

publication, or in condition to be allowed for registration on the Supplemental Register,

the examining attorney may attempt to contact the applicant by telephone or email to obtain

the statement. If the examining attorney is unable to reach the applicant by telephone or

email, the examining attorney must issue an Office action. If the applicant responds by

telephone or email, the examining attorney must issue an examiner’s amendment to enter the

statement into the record.

If any evidence in the record contradicts the applicant’s

assertion that it has a bona fide and effective industrial or commercial establishment in

the relevant country, the examining attorney must require the applicant to set forth the

specific circumstances which establish that the applicant maintains a bona fide and

effective industrial or commercial establishment in the country. Relevant factors include

the presence of production facilities, business offices, and personnel.

The presence of an applicant’s wholly owned subsidiary in a

country does not, by itself, establish country of origin.

See

In re Aktiebolaget

Electrolux

, 182 USPQ 255

(TTAB 1974) .  The fact that the applicant is wholly owned by a foreign company does not

establish country of origin.

See

Karsten Mfg. Corp. v. Editoy AG

, 79 USPQ2d

1783 (TTAB 2006) .

The sale of goods or services outside the United States

through related companies or licensees does not create a bona fide commercial establishment

and thus does not establish country of origin.

Id

.;

see

also

Ex parte Blum

, 138 USPQ 316 (Comm’r Pats. 1963) (country of origin cannot

be established by relying on contractual relationships with a licensee in another

country).

The United States, by definition, is not a country that has a

treaty with the United States. Therefore, the term “country of origin” in §44(b) and (c)

means a country other than the United States.

In re Fisons Ltd.

,

197 USPQ 888 (TTAB 1978) ;

see

TMEP §1002.05

(Comm’r Pats. 1963) (country of origin cannot

be established by relying on contractual relationships with a licensee in another

country).

The United States, by definition, is not a country that has a

treaty with the United States. Therefore, the term “country of origin” in §44(b) and (c)

means a country other than the United States.

In re Fisons Ltd.

,

197 USPQ 888 (TTAB 1978) ;

see

TMEP §1002.05

.

See

TMEP

§1002.01

for information about how the examining attorney should

handle an application in which the applicant is not entitled to registration under §44(e),

and

§1002.02

and

§1003.01

for information about how the examining attorney should

handle an application in which the applicant is not entitled to priority under §44(d).