declaration in accordance with 37 C.F.R. §2.20. See 37 C.F.R. §2.71(d). In some situations, however, an declaration is not necessary in connection with specimens affidavit or submitted after the original filing of the application, amendment to allege use or statement of use. instance, if a specimen is cut from a larger object, when For a sample (or a photograph) of the complete object is submitted, it is not necessary to provide an affidavit or declaration. Likewise, catalogs, catalog pages, or similar types of advertising brochures, which do not themselves represent use, nevertheless may contain photographs showing the goods with the mark thereon. These may constitute acceptable facsimiles. acceptable explanation or actual specimens are later filed Accordingly, if an which corroborate the original material, an affidavit or declaration is not necessary. Under circumstances such as these, the additional specimens are merely supplemental and in explanation of the original specimens, and the examining attorney may consider the original specimens to have been satisfactory. See TMEP $1301.04 regarding service mark specimens. 905.12 Requirements for Substitute Specimens and Statutory Refusals The examining attorney should issue a refusal under §§1, 2, 3 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053 and 1127, as appropriate, in conjunction with a requirement for substitute specimens when the deficiency in the specimens appears to be more than purely technical, that is, when the deficiency discloses an essential failure to use the subject matter as a trademark and/or service mark. On the other hand, if the deficiency in the specimens is of a technical nature, and it is reasonable to expect that the applicant will be able to provide acceptable substitute specimens or to correct the deficiency through other means, such a refusal is unnecessary. For example, if the applicant identifies its goods as "computer programs," but the specimens show use of the mark as a service mark for custom design of computer software, the examining attorney should indicate that the applicant may provide substitute specimens to conform to the present identification of goods. In such a case, it generally would be unnecessary to issue a refusal. Likewise, if the applicant were to identify its goods as "hamburger sandwiches," but the specimens showed use in commerce with restaurant services only, the examining attorney ordinarily should state the requirement to provide substitute specimens with no additional refusal. Even if the specimens provided fail to show trademark or service mark use in any class, but the examining attorney determines that the deficiency is purely technical and that it is likely that the applicant will be able to provide acceptable substitute specimens, the examining attorney should issue the requirement for substitute specimens without an additional refusal. This generally would be true in a "goods" application where the applicant has submitted specimens showing use of the mark in advertising, but it is reasonable to expect that the applicant has also made proper trademark use. If the applicant fails to provide acceptable substitute specimens, the examining attorney should then make the requirement for acceptable specimens final, if the case is otherwise in condition for a final refusal. 906 Registration Notice The registrant of a mark registered in the Patent and Trademark Office may give notice that the mark is registered by displaying with the mark the words "Registered in U.S. Patent and Trademark Office" or the abbreviation "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, ⚫. Trademark Act §29, 15 U.S.C. §1111. The federal registration symbol may not be used with marks which are not actually registered in the United States Patent and Trademark Office. Even if an application is pending, the registration symbol may not be used before the mark has actually become registered. 906.01 Informing Applicant of Apparent Improper Use If specimens in an application show a federal registration symbol used with the mark which is the subject of the application, or with any portion of such mark, the examining attorney should determine from the Office records whether or not such matter is registered. If it is not, and if the symbol does not appear to indicate foreign registration (see TMEP §906.05), the examining attorney should point out to the applicant that the Office records do not show that the mark with which the symbol is used on the specimens is registered and that the registration symbol may not be used until a mark is registered in the Patent and Trademark Office. The examining attorney should not require any explanation or comment from the applicant concerning the use of the symbol in relation to the mark. The examining attorney must determine what the mark is to which the symbol pertains from the location of the registration symbol in relation to the mark on the specimens. Depending upon the arrangement of matter on the specimens, it is possible that the examining attorney may reach a conclusion different from the applicant's intention. Therefore, trademark registration owners would be well advised, when using the registration symbol, to place it as close to the mark as the practicalities of art work and printing permit. 906.02 Only Statutory Symbols are Pertinent The question of misuse of the registration symbol under the Trademark Act arises only if the official symbols specified in the Act are used. Terms such as "trademark" "trademark registered," and "trademark applied for," are neither official nor statutory symbols of federal registration and their use should not be questioned by the examining attorney. Dunleavy Co. v. Koeppel Metal Furniture Corp., 134 USPQ 450 (TTAB 1962). 906.03 Fraud Improper use of a federal registration symbol which is deliberate and with the intention of deceiving or misleading the public or the Patent and Trademark Office is fraud. See Copelands' Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991); Wells Fargo & Co. v. Lundeen & Associates, 20 USPQ2d 1156 (TTAB 1991). The examining attorney shall not base a refusal to register on fraud, under any circumstances. If it appears to the examining attorney that there has been fraud upon the Office, the examining attorney should follow the procedures outlined in TMEP §1803. 906.04 Improper Use of Registration Symbol Misunderstandings about use of federal registration symbols are more frequent than are occurrences of actual fraudulent intent. Common reasons for improper use of the federal registration symbol which are not regarded as indicating fraud are: (1) mistake as to the requirements for giving notice (Confusion often occurs between notice of trademark registration, which may not be given until after registration, and notice of claim of copyright, which must be given before publication by placing the notice • on material when it is first published.); (2) inadvertence in not giving instructions (or adequate instructions) to the printer, or misunderstanding or voluntary action by the printer; (3) the mistaken belief that a state registration gives a right to use a registration symbol specified in the Trademark Act (See Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964)); (4) registration of a portion of the mark (See (5) registration of the mark for other goods (See (6) a recently expired or cancelled registration of (7) another mark to which the symbol relates on the same label (See S.C. Johnson & Son, Inc. v. Gold Seal Co., 90 USPQ 373 (Comm'r Pats. 1951)). See Sauquoit Paper Co., Inc. v. Weistock, 8 USPQ 349 (CCPA 1931); Radiant Mfg. Corp. v. Da-Lite Screen Co., 128 USPQ 132 (TTAB 1961); Tobacco By-Products & Chemical Corp. v. Smith, 106 USPQ 293 (Comm'r Pats. 1955). 906.05 State and Foreign Registration Registration in a state does not entitle a person to use the symbols specified by the federal statute for designating registration in the United States Patent and Trademark Office, and such use would be improper use. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964). Several countries in addition to the United States recognize use of the letter R enclosed within a circle to designate registration. When a foreign applicant's use of the symbol on the specimens is based on a registration in a foreign country, such use will not be regarded as improper. The following foreign countries use the R in a circle to indicate that a mark is registered in their country: 907 Compliance with Other Statutes 37 CFR $2.69. Compliance with other laws. When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application. Use of a mark in commerce must be lawful use in commerce in order to be the basis for federal registration of the mark. Trademark Rule 2.69, 37 C.F.R. §2.69, permits the Office to inquire concerning compliance with federal laws to confirm that the applicant's use of the mark in commerce is lawful. In the past, the Office routinely made inquiries concerning compliance with certain federal laws, such as laws governing the labelling of foods, drugs and cosmetics. However, the Office no longer makes such inquiries on a routine basis. The examining attorney should only inquire concerning compliance with federal laws or refuse registration based on the absence of lawful use in commerce when a court or the responsible federal agency has issued a finding of noncompliance under the relevant statute or where there has been a per se violation of the relevant statute. Cf. Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045 (TTAB 1988); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984). For the purpose of determining whether to issue such an inquiry, the Office will not regard apparent technical violations, such as labelling irregularites on specimens, as per se violations. For example, if a package fails to show all required labelling information, the examining attorney should not take any action. Likewise, the Office no longer routinely solicits information regarding label approval under the Federal Alcohol Administration Act or similar acts. Per se violations necessitating an inquiry or refusal are those where a clear violation of law, such as the sale or transportation of a controlled substance in violation of law, is evident in the record. 900-20 اسمع International Agreements 1004.03 Status of the Foreign Registration 1004.04 Ownership of the Foreign Registration 1004.05 Translation of the Foreign Registration 1005 Applications under §44(d) Claiming a Priority Filing Date Based on Foreign Applications 1005.01 The "First-Filed" Requirement 1005.02 Section 44(d) Applications Not Limited to Country of Origin 1005.03 Form of the Priority Claim 1005.04 Applicants May File under Both §44(d) and (e) 1005.05 Requirements for Receiving a Filing Date under $44(d) 1005.06 Effect of Failing to File Within Six Months 1005.07 Section 44(d) and Priority for Publication 1005.08 Abandonment of the Foreign Application 1006 Filing on More than One Basis and Changing the Basis of the Application 1006.01 Filing on More than One Basis 1006.02 Proper Assertion of More than One Basis 1006.03 Amending to Add or Substitute a Basis 1006.04 Time Periods During which Basis May Be Changed 1006.05 Date of Amendment to Change Basis 1006.06 Deletion of Erroneous §1(b) Basis 1006.07 Deletion of §1(b) as a Basis for Registration After Publication or Issuance of the Notice of Allowance 1007 Assignment of §44 Applications 1009 Designation of Domestic Representative by Applicants Not Domiciled in the United States General Application Requirements for §44 Applicants 1009.01 Drawings 1009.02 Translation and Transliteration of the Mark 1009.03 Allegations of Use and Specimens of Use 1009.04 The Identification of Goods and Services 1001 Section 44 Registration Independent of Underlying Foreign Registration Section 44 Applications - General The United States has assumed certain obligations under international agreements in the trademark field. These obligations arise principally from the agreements adopted at the Paris Convention for the Protection of Industrial Property of 1883 and subsequent revisions to these agreements. In addition to the Paris Convention, the United States is also a party to the General Inter-American Convention for Trade-Mark and Commercial Protection and certain other agreements. Appendix B to this Manual lists the other parties to each of these agreements and other relevant information. Section 44 of the Trademark Act, 15 U.S.C. §1126, implements these agreements. Section 44 provides significant benefits principally by permitting eligible applicants to register a mark in the United States based on ownership of a foreign registration and a statement of a bona fide intention to use the mark in commerce, without use in commerce prior to registration. In re Unisearch Ltd., 21 USPQ2d 1559 (Comm'r Pats. 1991) (requirement of bona-fide-intent-to-use statement held not contrary to Paris Convention). Section 44 may also afford a qualified applicant a priority filing date, that is, an earlier effective filing date in the United States based on a previous filing in a foreign country. The principal focus of this chapter is the administration of §44. Applicants domiciled in the United States as well as foreign applicants, may be entitled to register marks under §44 provided they meet the requirements of the section. While applicants eligible to proceed under §44 are entitled to register marks under §44 alone, such an applicant may also seek registration on the basis of use in commerce alone, on the basis of a bona fide intention to use in commerce alone, or on the basis of both $44 and either use in commerce or a bona fide intention to use in commerce. In re Gillier, 18 USPQ2d 1973 (Comm'r Pats. 1991); 37 C.F.R. §2.33(d). If an applicant, eligible to proceed under §44, elects to base its application on use in commerce or a bona fide intention to use in commerce, either as a sole basis for registration or in addition to §44, the applicant must comply with all application requirements applicable to each basis asserted. This chapter emphasizes those areas where §44 dictates different procedures from those which would apply to a use-in-commerce or intent-to-use application. Section 44 applications fall into two basic categories: (1) United States applications relying on foreign applications to secure a priority filing date in the United States (§44(d)) and (2) United States applications relying on issued foreign registrations as a basis for registration in the United States (§44(e)). In an application filed under either §44(d) or §44(e), where §44(e) is the only basis for registration, the applicant must state the applicant's bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration. In other respects, the requirements applicable to each category differ significantly and, therefore, each category will be treated separately in this chapter. 1002 Definition of Eligible Applicants under $44 Section 44(b) of the Trademark Act, 15 U.S.C. $1126(b), 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(c) defines "country of origin" as follows, "For the purposes of this section, the country of origin of the applicant is 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." Thus, the Act establishes a hierarchical, alternative scheme to determine an applicant's "country of origin" under $44. Under the definition, an applicant can have more than one country of origin. This concept of "country of origin" is particularly relevant to an application under §44(e). The Trademark Trial and Appeal Board has held that a Delaware corporation, which had its only "bona fide and effective industrial or commercial establishment" in Canada, was entitled to proceed under §44(e). In re International Barrier Corp., 231 USPQ 310 (TTAB 1986). See also In re Fisons Ltd., 197 USPQ 888 (TTAB 1978) (United States application based on United Kingdom application claiming priority under §44(d) and seeking registration under §44(e) held invalid upon assignment to a Delaware corporation not otherwise eligible under §44). The United States is not a §44(b) country because the United States, by definition, is not a country with which the United States has a treaty. Therefore, an applicant domiciled in the United States may not obtain registration under §44(e) unless the applicant relies on 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 under the relevant criteria. Applicants 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. See In re ETA Systems Inc., 2 USPQ2d 1367 (TTAB 1987), dec. withdrawn on other grounds (TTAB, November 28, 1988). The priority claim under §44(d), by itself, does not require that the applicant establish that the country where the application was filed is its country of origin. Although §44(d) establishes a basis for filing and a priority filing date, it does not constitute a basis for registration by itself. In re Daiwa Seiko, Inc., 230 USPQ 794 (Comm'r Pats. 1986). Therefore, if an applicant files based on a claim of priority under §44(d) and asserts 44(e) as its basis for registration, the applicant must establish country of origin in the country which has issued or will issue the relevant foreign registration under §44(e). For example, a Texas corporation may assert a priority claim under §44(d) based on ownership of an application in Mexico. However, this applicant must also assert a valid basis for registration. The applicant may do so by asserting use in commerce under §1(a) or a bona fide intention to use in commerce under §1(b). In the alternative, the applicant may establish that Mexico is its "country of origin" and thereby establish the prospective Mexican registration as its ultimate basis for registration in the United States. If, at the time of filing, the applicant asserts priority under §44(d) as its basis for filing and indicates nothing further as to its basis for registration, the Office will presume that its basis for registration is the registration which will issue from the relevant foreign application. See TMEP §1005 for a more detailed discussion of §44(d). Similarly, a corporation of France may rely on a first-filed application in Canada for its priority claim under §44(d). The applicant may assert use in commerce under §1(a) or a bona fide intention to use in commerce under §1(b) as its basis for registration in the United States. In the alternative, the corporation of France may establish Canada as its "country of origin" and thus rely on the prospective Canadian registration as its ultimate basis for registration in the United States. As a further alternative, the corporation of France may rely on a registration in France filed after its application in Canada, as its ultimate basis for registration. The Commissioner has also held that §44(i), which provides that, "Citizens or residents of the United States shall have the same benefits as are granted by this section 1000-2 |