Los Angeles Trademark Foreign Filing Basis Attorney

Initial US trademark applications are filed on either a 1(a) “actual use” basis or a 1(b) “intent to use” basis. But in the event an owner of a preexisting foreign trademark application or registration seeks to file a corresponding trademark in the United States, he or she may file the US application in different ways to gain benefit from their earlier filed foreign trademark application or registration. In those instances, the application is filed on what is called a Section 44(d) or Section 44(e) basis.

I. SECTION 44(D) FOREIGN APPLICATION BASIS

Assuming a trademark application was initially filed in a country outside of the US, a corresponding trademark application can then be filed in the US on a 44(d) basis if it is filed within six (6) months of the filing of the original foreign application. By doing so, the subsequent US filing takes priority of the earlier filing date of the original foreign application, also known as “foreign priority basis”. In other words, the original filing date in the first filed foreign country will be the effective filing date of the US application.

This concept of foreign priority is primarily significant because if another US application is filed after the §44(d) applicant’s priority date (i.e. the date of the original foreign-filed application), the §44(d) application will receive priority over the other application. For example, although the applicant’s §44(d) application may have been filed in the US after the other US application’s filing date, the applicant’s §44(d) application will still have priority assuming that its priority date (i.e. the date of the original foreign-filed application) predates the other US application. (See TMEP Section 1003.05 Section 44(d) and Priority for Publication).

Requirements to file under Section 44(d):

1. A claim of priority must be made within six months of the filing date of the first-filed foreign application.
2. The foreign registration must originate from the applicant’s country of origin.
3. The mark of the US application filed under §44(d) must be the same exact mark as the corresponding first filed foreign application.
4. Applicant must identify the filing date, serial number, and country of the first filed foreign application.
5. Applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce.
6. Both the applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the US that provides priority.
7. The scope of the identification of the goods and services must not exceed the scope of the identification in the first filed foreign application.

An arguably unfair advantage of both Section 44(d) and 44(e) filings is that the requirement to show use in commerce in the US is not required as part of the initial application. As such, a specimen that is normally required for each class in a 1(a) basis application, is not required for filing on a 44 basis.

The description or identification of the goods and services under a §44(d) basis raises another issue. Normally, the identification of goods and services of the US §44(d) filing will be exactly the same as the corresponding first filed foreign application. However, unlike in the US, many foreign countries allow for broadly written identification of goods and services. After filing the US §44(d) application incorporating the identically broad identification of the goods and services of the first filed foreign application, the USPTO will often request that the applicant clarify or narrow the scope of the goods and services. Regardless of what action an examiner may take, the scope of the goods and services in the US §44(d) application cannot exceed the scope of the first filed foreign application.

Lastly, if the 6 month window to file a §44(d) application has passed, the foreign applicant can still file a §44 application but without benefiting from the foreign priority date.

II. SECTION 44(E) FOREIGN REGISTRATION BASIS

The §44(e) basis can be used any time after the corresponding foreign trademark application has matured into a registration. Similar to the §44(d) basis, a §44(e) need not prove actual use of the trademark in the United States at the time of filing the application. However, the applicant must have a bona fide intent to use the mark in US commerce at the time the application was filed. In fact, if a lack of bona fide intent to use the mark can be proved by a challenger, the trademark may be deemed void ab initio. (See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434 (T.T.A.B. Oct. 13, 2013, where opposition sustained because applicant lacked objective evidence of affirmative actions to use the mark in the US). Additionally, proof of use in commerce is always required in the subsequent Section 8 and Section 8/9 renewals. Further, while proof of actual use in commerce is not required for filing a Section 44 basis, proof of actual use will be required in an infringement action in court in the US. Proof of use in commerce is eventually particularly important to the registrant to avoid the argument of abandonment of the registrant’s trademark.

Filing on a §44(e) requires a copy of the foreign trademark registration to be submitted at the time of §44(e) filing along with a translation if not in English. And as with the §44(d), the identification of the goods and services must be the same and not exceed the scope of the foreign registration, and the mark must be exactly the same.

It is important to note that a grant of a foreign registration does not guarantee that the US §44(e) application will be granted. The application will still be reviewed according to the standards set forth by the USPTO and trademark law and may be rejected for a variety of reasons although the corresponding trademark registration was granted in a foreign country.

III. AMENDMENTS TO THE INITIAL US FILING BASIS

In some cases, particularly when time is of the essence to file in the US, the initial filing basis may have been incorrect. In certain circumstances, the original US filing basis may be changed by filing a Voluntary Amendment. For example, the applicant may have incorrectly filed a US application on a 1(b) intent to use basis. However, an earlier filed foreign application may qualify as a priority basis for a §44(d) filing. If appropriate, a voluntary amendment modifying the 1(b) basis may be made. By doing so, the applicant will simultaneously request that its application be suspended to await for the submission of the foreign registration, thereby relying on a §44(e) as a basis for registration.

In other cases, an amendment to a §44 filing basis may be made if the underlying foreign application fails to mature to a registration. Ultimately for all §44 applicants, the underlying foreign application must mature to a registration in order for the US §44 application to mature to a registration. In the event the foreign application does not register, an amendment can be made to the US application from §44 to 1(a), which then requires the applicant to prove use in commerce in the US.

IV. SECTION 66(A) INTERNATIONAL REGISTRATION UNDER THE MADRID PROTOCOL

Under Section 66(a) of the Lanham Act, the applicant can seek an extension of protection of its underlying trademark under by obtaining an International Registration under the Madrid Protocol. The Madrid Protocol is a treaty entered into by several member countries and administered by the World Intellectual Property Organization (WIPO). For more information about the Section 66(a) of the Madrid Protocol, please refer to this page.