[E-trademarks] 44e aplication

[Laura Geyer]

Dear Russell:

The TMEP 1004.02 says you can base a US application on more than one foreign application so long you're clear in the application which foreign registration applies to which classes.

I'm surprised they have three registrations so quickly that they can make the 6 month priority window. Must be one a' them foreign jurisdictions that registers super quickly.

Anyway, I don't know how it works, and whether the fact that the goods are in the same class in each registration is significant, but at least they say you can!

https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1000d1e297.html

1004.02    Application May Be Based on More than One Foreign Registration
A U.S. application may be based on more than one foreign registration.  The applicant must meet all requirements of the Trademark Act and rules for each foreign registration upon which the U.S. application is based, and must specify which goods/services are covered by which foreign registration.

If a §44 applicant amends an application to rely on a different foreign registration after publication, this is not considered a change in basis.  However, if the amendment is acceptable, the application must be republished.  See TMEP §1505.03(a)<https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1500d1e632.html> regarding post-publication amendments that require republication.


Kindly,
Laura

Laura Talley Geyer | Of Counsel

ND Galli Law LLC
1200 G Street, N.W., Ste 800
Washington, DC 20005
Tel: (202) 599-9019 (direct)
https://ndgallilaw.com/laura-geyer/
https://ndgallilaw.com/

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Russell Nugent via E-trademarks
Sent: Wednesday, December 18, 2024 10:01 AM
To: e-trademarks at oppedahl-lists.com
Cc: Russell Nugent <russell at humphriesfirm.law>
Subject: [E-trademarks] 44e aplication

EXTERNAL EMAIL
I have been approached by a potential client that has three foreign registrations in one single class of goods/services and would like to file an application in the US claiming priority to all three.  It appears that the USPTO may not allow a claim to more than one application, is this correct?  Is the only way for this client to proceed to file three separate applications, each claiming priority to a separate foreign registration?



Thanks,

RUSSELL D. NUGENT
Attorney at law


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