[E-trademarks] A question about §44(e) basis and TMEP §1004.02

[Robert Reynolds]

Good morning, esteemed listmates.

                I have a foreign client with multiple registrations in a foreign jurisdiction that doesn't allow multi-class registrations. The marks are identical between these foreign registrations, only differing in the g/s descriptions. I'm wondering if those could be combined into a single registration with the USPTO, claiming a §44(e) basis, and uploading the corresponding registration certificate per class.

I haven't found a good answer in the TMEP. Closest I've found is §1004.02, which is a two-sentence section only saying only that "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." I can't tell from the plain language there or in the Lanham Act if this allows only for multiple redundancies (back up your identical US registration with multiple foreign registrations) or if it allows for the consolidation of multiple foreign registrations for the same mark with the same owner.

My gut says that the §44(e) basis won't support consolidation, as it's supposed to be a "cut and paste" reciprocity solution. But since the USPTO receives the same fees and does less work, maybe it would fly.

Bob Reynolds
Senior Counsel
Klintworth & Rozenblat IP LLP
2045 W. Grand Ave, Ste B PMB 84396
Chicago, Illinois 60612
direct 773.770-2554  fax 773.570.3328
rreynolds at kandrip.com<mailto:rreynolds at kandrip.com>
www.kandrip.com<http://www.kandrip.com/>

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