In this article, we cover the issue of obtaining a copy of a Foreign Registration Certificate for USPTO Trademark registration proceedings. Specifically, we will focus on the UKIPO, the EUIPO, and the German Patent and Trademark Office in their role as ‘Foreign Intellectual Property Office’.
Trademark applications filed with the USPTO are often based on a trademark right obtained in a country other than the United States. The USPTO refers to such trademark rights as ‘Foreign Registrations.’
In cases like these, the statutory requirement under the US Trademark Act for a true copy, photocopy, certification, or certified copy of a foreign registration from the applicant’s country of origin must be satisfied.
Getting ones hands on the Foreign Registration Certificate can be challenging, especially if the Foreign Intellectual Property Office does not include certificates in their public registry.
If no Foreign Registration Certificate is available at the time of filing, we recommend submitting a copy of the public foreign register entry along with a translation thereof into English language. According to our experience, the majority of USPTO Examiners will consider these documents sufficient.
If found insufficient, an issue along the lines of “Foreign Registration Copy” will likely be raised in an Office Action. If “Foreign Registration not true copy” is requested, a simple photocopy of the registration certificate will suffice. If a “Certified Foreign Registration” is requested, a foreign registration certificate, certified by the issuing Intellectual Property Office, must be provided.
Where to find the Foreign Registration Certificate?
Straightforward sources for the Foreign Registration Certificate are the applicant themselves and their foreign representative. Alternatively, the registration certificate must be ordered directly from the Foreign Intellectual Property Office. In the following, we are discussing the best practices before the UKIPO, the EUIPO, and the German Patent and Trademark Office GPTO.
The UKIPO enables anybody to request an uncertified copy of a trademark registration free of charge. A certified copy of a trademark registration certificate can be obtained upon a fee.
The EUIPO grants direct access to certified registration certificate in their online registry for logged in users.
The German Patent and Trademark Office GPTO has no public access to their trademark registry. It is possible to request a print-out of the trademark register entry, but it will only be granted if legal interest is credibly proven. A fee must be paid. All communication must be in paper-form or fax. Since communication is limited to Germany, representation by German counsel is advised.
Here are the steps to obtain the Foreign Registration Certificate from the GPTO:
- Obtain proof of legal interest: Power of attorney and a copy of the USPTO Office Action
- Written Request: request trademark register excerpt in writing along with the documents mentioned above. Fax or paper mail. Email is not accepted.
- Pay fee: pay the fee for register excerpt, which includes a base fee and a page fee
- Receive paper documents: address in Germany needed
- Translation: the registration certificate obtained from the register excerpt must be translated into English
How can we help?
We can obtain Trademark Registration Certificates from the UKIPO, the EUIPO, and the German Patent and Trademark Office. In the case of Germany, we estimate processing time of 4 weeks. With years of experience in the US, European, and German IP matters, we specialize in navigating bureaucratic hurdles in Europe and the US on your behalf. We invite you to learn more about our service principles and to schedule a free initial consultation.