U.S. Filing Basis: Claiming Priority to a Foreign Trademark Application or Registration

Filing a trademark application in the U.S. means that the applicant must select a filing basis for their asserted trademark.  In this article, a general overview will be provided for Section 44(d) and (e) applications, which are based on foreign filed trademark applications and registrations at the United States Patent and Trademark Office (“USPTO”).

It is possible to file a trademark application in the U.S. that claims priority or is based on a foreign filed application (Section 44(d) filing basis) or a foreign issued trademark application (44(e) filing basis).  There are some advantages and disadvantages for filing a U.S. based application based on Section 44(d) [Priority to an earlier filed application) along with a filing basis for Section 44(e) or for only Section 44(e) alone. 

FOREIGN APPLICATION – SECTION 44(d)

A non-U.S. citizen may file an application for registration under Section 44(d), based on a prior application filed in a foreign country like Canada within the six-month period preceding the U.S. application.

1)   The advantages of Foreign fillings under 44(d) are as follows:

• The applicant may claim a date of priority as of the filing date of the foreign application (rather than the foreign registration date), provided;

            i. The trademark applicant files the U.S. application with the USPTO within the six-month period after the 

               applicant files the foreign application;

            ii. The U.S. application covers goods and/or services that do not exceed the scope of those covered by the 

               foreign application; and

            iii. The foreign application later matures into a registration.

• You do not have to provide a specimen as proof of use of interstate commerce with your filing application.  Instead, your “proof” will revolve around the status of the foreign filed registration.

However, you still must declare in your U.S. trademark application that you have a bona fide (or a genuine, real, sincere) intention to use your trademark in interstate commerce in the U.S.

2)   The disadvantages of Foreign filings under 44(d) are as follows:

• Your trademark application must be filed with the USPTO within six months of the trademark application filed for in a foreign country such as Canada.

• Higher financial burden if you are unable to afford the filing fees of all applications;

• Longer waiting period for publication; an application under Section 44(d) will not be published for opposition unless and until the foreign application matures into a registration and the applicant establishes a basis for filing.

• Depending on the country where the foreign filing occurred it could take several months before your foreign application is registered causing a delay in the execution of your U.S. trademark application.

If your trademark is examined and is found not to conflict with any U.S. laws or any prior filed trademark registrations, then your trademark may be issued by providing proof that the same trademark in the foreign country has been registered and includes the same class and same goods or services.

FOREIGN REGISTRATION – SECTION 44(e)

A non-U.S. citizen may file a U.S. application for a trademark that has been registered in a foreign country like Canada, you may do so at any time after the registration of the foreign trademark under Section 44(e). 

1)   The advantage of Foreign fillings under 44(e) is as follows:

• This type of application does not have to be filed within six months of the first application in the foreign country; and

• An applicant for registration under Section 44(e) does not need to establish that the mark was in use in commerce in the U.S. prior to the issuance of the U.S. registration.

2)   The disadvantage of Foreign filings under 44(e) is as follows:

• The priority date for an application filed under Section 44(e) is the date of the U.S. application, not the date of the foreign application; and

• The U.S. Trademark Examiner will still require that your trademark application conform to U.S. requirements, and if there are issues or differences between the trademark as filed for in the foreign registration and the U.S., it may be rejected.

However, the applicant must submit to the USPTO a copy of the foreign registration, as well as a verified statement that, as of the filing date of the application, the applicant has a bona fide intent to use the mark in commerce on or in connection with the goods and/or services listed in the application.

In summary, it is possible to file a trademark application in the U.S. that relies on a previously filed trademark application or previously granted trademark registration from a foreign country, such as Canada.  As noted above, there are some advantages and disadvantages to doing so, but certain requirements must be met as well.  It is recommended to verify the filing plan with a qualified trademark professional to better understand these requirements and to avoid possible issues later in the examination process.

Disclaimer:  This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney.  The information provided above is meant for informational purposes only and may be subject to change.