The concept of trademark priority can be crucial in trademark disputes, litigation, or in Trademark Trial and Appeal Board oppositions or cancellation proceedings. Understanding priority rights when the trademark was originally based on a foreign application/registration can be tricky and important when determining your most advantageous foreign trademark filing strategy. Further, there is more than one way, in fact several ways to obtain priority rights in the U.S.

What is Priority in Trademark Law?

Priority in trademark law refers to the right to claim an earlier filing date based on an existing application or registration. The rationale behind this is that trademark rights are given to the first party who uses or files a mark in the United States. For this reason, priority rules also become very important for businesses crossing borders, particularly with respect to protection and enforcement.

Types of U.S. Priority Based on Foreign Applications

1. Paris Convention Priority

The Paris Convention for the Protection of Industrial Property allows the applicant the right to claim priority in the U.S. based on an earlier trademark application filed in any member country. For that, a corresponding U.S. application is to be filed with a proper claim of the filing date made within six months from the date of the first foreign filing. That is what is referred to as “Paris Convention Priority.”

Key Points:

• Must apply in the United States within six months of filing in the foreign country.
• The United States application bears the filing date of the foreign application.
• Only member countries of the Paris Convention can take advantage.

2. Madrid Protocol Priority

Second, priority in the United States may be claimed under the Madrid Protocol through an international application. In this regime, the applicant submits a single international application to the trademark office of the applicant’s home country, designating the United States and any other countries where protection is desired. The three sections within Madrid Protocol most often used are Section 44(d), Section 44(e), and Section 66(a). The types of priority obtained will vary between the three as described below.

1. Section 44(d) Priority: Simplifies filing procedure for obtaining international protection for firms. Under Section 44(d) of the U.S. Trademark Act, any foreign trademark application can be used to base priority, whether the foreign country is a Paris Convention country or a Madrid Protocol country. In other words, the priority date, is the date of filing of the original foreign application, but only if the applicant has filed the corresponding country filing within six months of the original foreign filing. By doing so, the corresponding application will gain benefit, under Section 44(d), of the earlier foreign filing date as the priority date.

Key Points:

• Six-month window to claim priority in the U.S.
• The U.S. application receives same priority date as the foreign application
• Can apply to a subsequent US or other member country.

2. Section 44(e): Under Section 44(e) of the Trademark Act, if a party has obtained a foreign trademark registration in its country of origin, it may file for a trademark application. There is no six-month deadline of filing under this provision, unlike in 44(d). The applicant also does not need to prove that the mark has been used in the United States or submit specimens. Under Section 44(e), by filing, a constructive date of use is accorded to the applicant as of the filing date of such subsequent corresponding application. The filing date will then serve as the constructive used date irrespective of any actual use in commerce.

Key Points:

• Based off an original foreign trademark registration.
• Priority date is not the original foreign filing date, but rather constructive use date of the subsequent corresponding filing.
• The owner’s country of origin must be from the same country as the foreign trademark registration.
• Specimen of use is not required during initial filing, but will be required for later Section 8 renewals.

3. Section 66(a): The request, when it involves extending protection to the United States under the Madrid Protocol, may be included in the international application or in a subsequent designation after the registration of the trademark by the International Bureau. Such a request is called a Section 66(a) application. The constructive use date, which is a date of priority for a Section 66(a) application, is the earliest of: (1) the date of the international registration; (2) the date when the International Bureau recorded the subsequent designation requesting U.S. protection if made after the international registration date; or (3) the priority date claimed under the Lanham Act, §67. However, this constructive use date is based on the successful registration of the trademark on the Principal Register of the United States Patent & Trademark Office.

The complexities of U.S. trademark law, especially where priority claims are based on foreign applications, can make it even more challenging. There are various types of priority determination either via the Paris Convention, or through Sections 44(d), 44(e), and 66(a) of the Madrid Protocol, that businesses must be knowledgeable about to protect their intellectual property worldwide. Consulting a trademark attorney who is skilled in international trademark law will help guide you in optimizing your trademark strategy.