Foreign-Priority Trademark Applications and their Benefits

US trademark applications and registrations can be used to obtain trademark protection in other countries.  Similarly, foreign trademark applications and registrations can be the basis for a trademark application filed in the US.

As a member to a number of international agreements, the United States has assumed certain obligations regarding foreign trademarks.  There are two bases for filing a US trademark application relying on a foreign trademark: those relying on foreign trademark applications under §44(d) of the Lanham Act and those relying on foreign trademark registrations under §44(e).

What are the eligibility requirements for non-US applicants?

To obtain a priority filing date under §44(d), the applicant’s country of origin must be a treaty country, but the foreign application does not have to be filed in the applicant’s country origin.

On the other hand, to obtain a registration under §44(e), the applicant must be the owner of a valid registration from the applicant’s country of origin.  The country of origin is the country in which the applicant has a bona fide and effective industrial presence or commercial establishment, or in which the applicant is domiciled or is a national.

The applicant’s activities and corporate structure in another country are thus important.  Showing that there are production facilities, business offices, and personnel in a country can help prove that a country is the applicant’s country of origin.  Neither a wholly-owned foreign subsidiary nor the sale of goods or services outside the US through foreign licensees will necessary establish a country of origin.

What are the eligibility requirements for US applicants?

An applicant domiciled in the US may claim priority under §44(d) based on the ownership of an application in a treaty country even if that treaty country is not the applicant’s country of origin, as long as it also asserts an in-use or an intent-to-use basis for registration.  However, an applicant domiciled in the US cannot obtain a registration under §44(e) unless, like above, the applicant is the owner of a registration from a foreign country and the applicant can establish that foreign country is the applicant’s country of origin.

What are the formal and time requirements?

Under §44(d), an eligible applicant seeking a priority date for its US trademark application can use the filing date of its first-filed foreign application if the priority claim is made within 6 months of the foreign application.  The applicant can either make the priority claim at the time the US application is filed, or it can submit the priority claim afterward, as long as the priority claim itself is made within 6 months of the foreign application’s filing date.

Section 44(d) relates to foreign applications, not registrations?

Yes and no.  If a foreign registration has not yet issued in a foreign application for which priority is claimed under §44(d), the USPTO will suspend publication of the US application until it receives a copy of the foreign registration.

What if I missed the 6-month deadline but my foreign application did mature into a registration?

§44(e) allows a US application to be based on a foreign registration after the 6-month deadline has passed, but it does not allow priority to be claimed.  Instead, the benefit of basing the application on the foreign registration is that you only have to allege use of the trademark in the US – you don’t actually have to show it.  Until use, however, there is no basis for enforcement of the registration.

How can §44 trademark applications be helpful?

There are some situations where a foreign application can save a US application.  If the US application is made under §44(d) and the priority claim is proper, the US application’s filing date will be treated as if it were the foreign application’s filing date.  If other applicants file on similar marks, but do so after that priority date, they will be rejected or suspended.  In other words, the §44(d) application will receive priority over not just applications filed after its actual filing date, but over applications filed between its actual filing date and its priority date.  This can be enormously helpful, allowing a §44(d) applicant to rely on its foreign application to save its US application from what otherwise would be a rejection or suspension.

§44(e) applications are helpful where an applicant has used and registered its mark in another country but has not yet used it in the US.  The §44(e) application allows such an applicant to obtain a registration by having an intent to use the mark without actual  use of the mark.  While this doesn’t give the applicant the ability to enforce the registration by suing someone copying the trademark, it does create defensive obstacles to others’ use.  For example, a later would-be applicant may perform a search and be deterred by the discovery of the registration, or, if the applicant doesn’t perform a pre-filing search, the USPTO can cite the registration as a basis for a rejection of the applicant’s application.

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