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

[Tim Ackermann]

Bob, I'd say you can. Look at these:
https://tsdr.uspto.gov/#caseNumber=87288063&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
https://tsdr.uspto.gov/#caseNumber=90440285&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
Tim Ackermann
The Ackermann Law Firm

E:  tim at ackermannlaw.com
P:  817.305.0690
F:  214.453.0810
W: ackermannlaw.com
O: 1701 W. Northwest Hwy. Ste. 100
     Grapevine TX 76051


On Thu, Nov 14, 2024 at 10:40 AM Robert Reynolds via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
>
> www.kandrip.com
>
>
> ------------------------------
>
> CONFIDENTIALITY NOTICE: This e-mail transmission, and any documents, files
> or previous e-mail messages attached to it may contain confidential
> information that is legally privileged. If you are not the intended
> recipient, or a person responsible for delivering it to the intended
> recipient, you are hereby notified that any disclosure, copying,
> distribution or use of any of the information contained in or attached to
> this transmission is STRICTLY PROHIBITED. If you have received this
> transmission in error, please immediately notify the sender. Please destroy
> the original transmission and its attachments without reading or saving in
> any manner.
> ------------------------------
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241114/0df90486/attachment.html>