U.S. Applicants

Section 44(b) of the Trademark Act provides that, “Any person

whose country of origin is a party to any convention or treaty relating to trademarks, trade

or commercial names, or the repression of unfair competition, to which the United States is

also a party, or extends reciprocal rights to nationals of the United States by law, shall

be entitled to the benefits of this section . . . .”

Section 44(i) of the Act provides that “[c]itizens or

residents of the United States shall have the same benefits as are granted by this section

to persons described in subsection [44](b) . . . .”  However, §44(i) does not provide an

independent basis for a U.S. applicant to register a mark under

§44(e).

See

In re Pony Int’l Inc.

, 1 USPQ2d 1076 (Comm’r Pats. 1986).

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) means some

country other than the United States, and the term “person” in §44(b) means a person who can

claim a country of origin other than the United States.

See

In re Fisons Ltd.

,

197 USPQ 888 (TTAB 1978) .

An applicant domiciled in the United States may claim priority

under §44(d) based on ownership of an application in a treaty country

other than

the United States

, even if the other country is not the applicant’s country of

origin.

See

In re ETA Sys. Inc.

,

2 USPQ2d 1367 (TTAB 1987) ;

In re Int'l Barrier

Corp.

, 231 USPQ 310

(TTAB 1986) ;

TMEP

§1002.02

.

However, an applicant domiciled in the United States may not

obtain registration under §44(e) unless the applicant is the owner of a registration from an

eligible country other than the United States

and

the applicant can

establish that the foreign country is the applicant’s country of origin.

See

Karsten Mfg. Corp. v. Editoy

, 79 USPQ2d

1783 (TTAB 2006) ;

In re Int'l Barrier Corp., supra; In re Fisons, supra

;

TMEP §1002.01

ed in the United States may not

obtain registration under §44(e) unless the applicant is the owner of a registration from an

eligible country other than the United States

and

the applicant can

establish that the foreign country is the applicant’s country of origin.

See

Karsten Mfg. Corp. v. Editoy

, 79 USPQ2d

1783 (TTAB 2006) ;

In re Int'l Barrier Corp., supra; In re Fisons, supra

;

TMEP §1002.01

.

For example, a Texas corporation may assert a priority claim

under §44(d) based on ownership of an application in Mexico, regardless of whether Mexico is

its country of origin.  However, this applicant must also assert a valid basis for

registration (

see

TMEP §1003.03

).  The

applicant may do so by asserting use in commerce under §1(a) and/or a bona fide intention to

use in commerce under §1(b) as its basis for publication.  The applicant cannot obtain

registration in the United States under §44(e) unless the applicant establishes that Mexico

is one of its countries of origin.

See

TMEP

§1002.04

regarding the applicant’s country of origin, and

§1002.03

and

Appendix B

for information about how to determine whether a particular

country is a party to an international treaty or agreement that provides for priority and/or

registration based on ownership of a foreign registration.

See also

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).

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