In Karsten Manufacturing Corporation v. Editoy AG; Editoy B.V.; Pingu V.V.; and Joker, Inc., (91101408 and 91108831) the TTAB held that an assignee of an application originally filed by a foreign corporation under Section 44(d) could continue to claim the benefit of the priority filing date, even though the assignee's country of origin is the United States. The assigned application, however, could not proceed to registration under Section 44 (e).
The original foreign based Section 44 applicant assigned the mark to a subsequently incorporated United States subsidiary. Even though the new United States company was foreign owned and controlled, it did not have bona fide commercial facilities outside of the United States and so it was not a "foreign applicant" for the purposes of 44(e). On the other hand, the assignment did not invalidate the 44(d) priority claim since the claim was properly made by the original applicant. An applicant stands in the shoes of its assignor and since applicants can amend or add a substitute basis for registration before or after publication, the 44(d) priority claim survives the assignment provided that the applicant also amends the application to assert a proper Section 1 basis for registration.
Vol. 53, June 2010