US TRADEMARK APPLICATIONS BASED ON PRIORITY FILING DATES
Our Trademark Attorneys are often contacted by individuals who have either pending or registered trademark applications in foreign countries and are now interested in obtaining trademark protection in the United States. Naturally, these applicants want to take advantage of a priority filing date based on the original foreign application/s. This seems rather intuitive; why should an applicant have to start from scratch when filing an “extension of coverage” trademark application in the US?
US FOREIGN TRADEMARK APPLICATION BASED ON A FOREIGN APPLICATION OR REGISTRATION
Critically, the applicant must first determine whether or not the newly desired US application will be based on an existing foreign trademark application or trademark registration. Or, simply, has the existing foreign trademark application already matured into a registered trademark or has it only been applied for? Depending on the status of the foreign application, the US trademark application may rely on either a Section 44(d) [pending trademark application] or Section 44(e) [registered trademark application].
FILING A US TRADEMARK APPLICATION UNDER 44(d)
In the event that the applicant has merely applied for the foreign trademark application and it is still pending, then the applicant may base the US trademark application on 44(d) and file the US application within six months of the foreign filing date.
An applicant can use Section 44(d) of the Trademark Act to file for a priority filing date. Eligibility for filing under Section 44(d) of the Trademark Act requires the applicant to meet the following criteria:
- have a “country of origin” that is a party to an international treaty or agreement with the U.S. that provides a right of priority or must extend reciprocal rights to priority to nationals of the U.S.; and
- a foreign application that was filed in a country that is a party to a treaty or agreement with the U.S. that provides a right of priority or extends reciprocal rights to priority to nationals of the U.S.; and
- the U.S. application must be filed within six months of the first foreign application in a treaty country.
Note that the foreign application does not have to be filed in the applicant’s country of origin under Section 44(d) of the Trademark Act. Conversely, filing under Section 44(e) does require that the country that issues the foreign registration for priority purposes must be the applicant’s country of origin. As defined by the Trademark Manual of Examining Procedure (TMEP) 1002.04, a “Country of Origin” is:
“the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national.” This is an incredibly important point indeed. In order to demonstrate that the Country of Origin requirement has been met, there is great flexibility: the applicant has the option of being domiciled, incorporated, or merely being organized in the appropriate-treaty country.
The applicant also has the right to provide a written statement (or have the trademark attorney provide the written statement) asserting that he/she has developed a “bona fide and effective industrial or commercial establishment in the relevant Country during the 6 month priority period beginning at the date of filing of the foreign application… which will be sufficient to establish that the country is the applicant’s country of origin.” TEMP Section 1002.04
If a trademark applicant has more than one country of origin and is filing under Section 44(d) of the Trademark Act, the USPTO examiner will refer to the Trademark Manual of Examining Procedure (TMEP) §1002.04 when reviewing priority filing date requests. Regardless of country of origin, the applicant must include a statement claiming a bona fide intent to use the trademark in commerce within the United States. This must be included even if the trademark application includes a use-based claim. Remember, the priority filing date will be deemed a constructive date of first use in the United States as outlined in TMEP § 201.02.
MULTI-COUNTRY TRADEMARK USE
If the trademark is being used in commerce in multiple countries, the first trademark application filed in any treaty country for the same mark and for the same goods and services is the application that must be attached when filing under Section 44(d). This establishes the filing basis and establishes another basis for publication and registration.
Consider the following example:
A first-filed application in Spain identifies the trademark as applicable to earrings and bracelets. The company then files in Switzerland for earrings, bracelets and pendants. If this company then applies for trademark protection under a 44(d) priority claim in the United States within six months of Switzerland registration, only “pendants” will qualify. The USPTO Examining Attorney may determine only a portion of the goods and services are entitled to a priority claim under 44(d). When this happens, the Examining Attorney will indicate which goods and services have priority. A conflict search of the USPTO records must be searched for any goods and services not granted priority under 44(d).
CONTINUITY AND SAMENESS OF THE TRADEMARKS MUST BE MAINTAINED
A critical point to consider is that US trademark Applications based on Foreign Applications must identify the EXACT SAME mark in both applications. So, if the foreign trademark application was for the Mark “78APEXBIZ”, the US Trademark Application CANNOT be for “87APEXBIZ”. Indeed, the US application is required to be “a substantially exact representation of the mark as it appears in the drawing in the foreign application”. TEMP 1011.01
CONTINUITY AND SAMENESS OF THE GOODS/SERVICES MUST BE MAINTAINED
The USPTO, quite reasonably, requires the listed goods/services in the US Trademark Application to mirror the goods/services listed in the foreign application and therefore, the goods and services listed in the United States Trademark Application cannot include items, which extend beyond the scope of the foreign application. TEMP 1402.01(b). Still, the USPTO recognizes that the original foreign application may very well include a description of goods/services which is inherently incompatible with the demands of a US trademark application and will therefore allow certain goods/services to be narrowed and honed for acceptability. The thrust of the idea though is that the applicant must stay true to the original goods/services covered in the foreign application.
JOINT 44(d) AND 44(e) APPLICATIONS
When a trademark applicant files under Section 44(d) and also indicates Section 44(e), the application must provide a record of the foreign registration to the USPTO. In the event that the copy of the registration was not submitted in the original application, The USPTO Examining Attorney will likely issue an office action requiring the submission of the copy.
SECTION 44(e) APPLICATIONS
In the event a foreign trademark application matures into a bona fide trademark registration, a US application may will on this registration without having to first provide an illustration of use in the US. Here, the applicant will be required to submit a copy of the registration which demonstrates to the USPTO that a foreign trademark registration does in fact exist. The copy will not need to be certified however it must provide the registration date and registration number.