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

[Robert Reynolds]

Well, that’s all the proof I needed. Case closed, love this listserv.

Big thanks, Tim!

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/>

________________________________
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.
________________________________



From: Tim Ackermann <tim at ackermannlaw.com>
Sent: Thursday, November 14, 2024 10:56 AM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Robert Reynolds <rreynolds at kandrip.com>
Subject: Re: [E-trademarks] A question about §44(e) basis and TMEP §1004.02

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<mailto:tim at ackermannlaw.com>
P:  817.305.0690
F:  214.453.0810
W: ackermannlaw.com<http://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<mailto: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<mailto:rreynolds at kandrip.com>
www.kandrip.com<http://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<mailto: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/20241114/8b8dde77/attachment.html>