## Facts

- A French company sought U.S. registration of the mark FOUQUET’S for restaurant and related services based on a French registration.
- The applicant obtained a French registration in 1990 with a 10-year term.
- The applicant filed a U.S. application in 1991 under Lanham Act §§ 44(d) and 44(e), relying on the French registration.
- The U.S. application remained pending for an extended period due to suspension.
- In 2001, the Examining Attorney noted the French registration had expired in 2000 and required proof that it had been renewed.
- The applicant argued renewal proof was unnecessary because it had a qualifying foreign registration when the U.S. application was filed.
- The Examining Attorney refused registration when the applicant did not provide acceptable renewal evidence, and the applicant appealed to the TTAB.

## Issues

1. In a Lanham Act § 44(e) application, must the foreign registration be in force when the U.S. registration issues?
2. May the USPTO require proof of renewal when the record indicates the foreign registration has expired or will expire before U.S. registration issuance?

## Decision

- The TTAB affirmed the refusal to register.
- The Board held that, for § 44(e), the foreign registration must be in force at the time the U.S. registration issues.
- Because the record showed the foreign registration had reached the end of its term, the Examining Attorney properly required proof of renewal.
- The applicant’s failure to submit an acceptable renewal document supported refusal.

## Legal Principles

- A § 44(e) filing is registration-based; the benefit of U.S. registration without U.S. use depends on the continued validity of the foreign registration.
- The foreign registration must be in force at the time the USPTO issues a U.S. registration based on § 44(e).
- When the record indicates the foreign registration has expired or will expire before U.S. registration issuance, the Examining Attorney must require acceptable proof of renewal.
- Unsupported assertions that the foreign registration was valid at filing do not satisfy § 44(e) when current in-force status is in question.

## Conclusion

The TTAB held that § 44(e) requires a valid, in-force foreign registration at the time of U.S. registration issuance and upheld refusal where the applicant did not provide proof that its foreign registration had been renewed.


In re Société d’Exploitation de la Marque Le Fouquet’s, 67 U.S.P.Q.2d 1784 (T.T.A.B. 2003)