Why aren't section 44(e)

Posted by . updated on 11/11/2009
What is the policy reason allowing a foreign company to register a trademark in the USA under 44(e) and then later apply for the exact same trademark in the same category, but based upon 1(b) (intent-to-use)?  Note that when applying under 44(e) the applicant must swear to have the intent to use the mark in the USA.

The intent to use element already exists in the original 44(e) application/registration, so how is the new 1(b) any different? 

Thanks in advance for any input on this.  Why does section 703 seem to carve out an exception here? 

-TM Enthusiast

TMEP Section 703 states:

"The USPTO will not issue two or more identical registrations. If two applications would result in registrations that are exact duplicates, the USPTO will permit only one application to mature into registration, and will refuse registration in the other application. If practicable, the USPTO will permit the applicant to choose which application should mature into registration.

Basis. Applications filed under ?1 of the Trademark Act are considered identical if the only difference between them is that one is based on use in commerce under ?1(a) and the other is based on intent-to-use under ?1(b). However, an application filed under ?1 and an application filed under ?44 that are otherwise identical are not regarded as duplicate registrations, nor is an application under ?66(a) of the Trademark Act regarded as a duplicate of an application filed under ?1 or ?44. "
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Answers (4)
arent  section  44e 
 
JSonnabend
44(e) combined with 1(b) is not "duplicate", i.e., it does not result in duplicate registrations.  The combination merely provides alternative bases for the same application.  Generally, adding the 1(b) basis is a fallback.  If the 44(e) basis proves unsupportable, the applicant still has the 1(b) basis on which to proceed.

- Jeff
 
 
tmenthusiast
Here's the issue.

Company A applied for and obtained registration for XYZ at the USPTO with a 44(e) basis. 

Company A years later applies for the same XYZ trademark in the same category, but now applies through 44(e) as well as 1(b).

TM examiner warns Company A that should it delete the 1(b) basis in the second application, the applications/marks would be identical and subject to cancellation under TMEP section 703.

My question is, why is this allowed, and what is the statutory intent here.  Company A already has the TM registered under 44(e), why should it be allowed to apply for a duplicate TM simply by adding a 1(b) basis? 

Thanks for your responses.
 
 
JSonnabend
I'm not sure I'm following.  If Company A has a registration for the mark, and the second application is identical to the first application except for the new 1(b) basis, there would be no need for the second application unless the first application (or the registration that resulted from it) were no longer valid or Company A feared that that might occur.

- Jeff
 
 
tmenthusiast
You got it.  Company A is most likely concerned that their original registration is subject to attack, so they applied again.  I am going to attack both marks, the registered one and the new application. 

The question is, why is this type of duplicate application allowed apparently under 703, or am I reading this wrong?  The examiner is letting the 2nd one go since there's the 1(b) basis added.  I want to argue to the TTAB in an opposition that this is a duplicate application, but 703 seems to go in the face of this argument (as quoted in an office action by the examiner).  So what policy reason if any would have prompted the writers of the TMEP to allow this exception to the duplicate application rule?  I am hoping nothing, and that the TTAB wil throw out the new application, but section 703 seems to be controlling here...and for no good reason that I can tell.

Thanks!
 

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What is the policy reason allowing a foreign company to register a trademark in the USA under 44(e) and then later apply for the exact same trademark in the same category, but based upon 1(b) (intent-to-use)?  Note that when applying under 44(e) the applicant must swear to have the intent to use the mark in the USA.

The intent to use element already exists in the original 44(e) application/registration, so how is the new 1(b) any different? 

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