by Sarah Nagae
Are you a non-US company with a business name, brand name and/or logo? Interested in entering the US market but not yet selling goods here? The US trademark law offers foreign applicants trademark protection before use of the mark even begins in this country, a major benefit for companies new to the US market.
Section 44 of the US Trademark Act (also called the Lanham Act) allows foreign parties to file applications in the US and provides two major benefits. First, the foreign applicant’s US application gets the effective filing date of the original, foreign application. Second, the foreign applicant does not have to provide proof of current use of the trademark in the US prior to issuance.
Key Points Regarding Filing Under Section 44 for Foreign Trademark Owners
There are two oft-cited parts to §44, called “44(d)” and “44(e).” Section 44(d) provides a basis for filing an application in the US while §44(e) provides a basis for registration in the US. Here are some key points about each part:
- Provides a basis for filing in the US.
- Must file US application within 6 months of filing in another country or territory that is part of the Paris Convention (called a “contracting state”). Where the application is filed doesn’t have to be country of origin, more on this later.
- Establishes claim of priority date, meaning that the date of filing of the foreign application is the effective filing date in the US.
- Have to list the contracting state where first filed and application number on the US application. Don’t have to provide further documentation regarding the foreign application.
- Provides a basis for registration in the US.
- The foreign registration must issue and must issue from applicant’s country of origin. Must file the foreign certificate of registration with USPTO.
- “Country of origin” is a term of art and is where the applicant has a “bona fide and effective industrial or commercial establishment” (see the Trademark Manual of Examining Procedure (TMEP) §1002.04 for details).
- Applicant must sign a declaration sayign that it has an bona fide intent to use the mark in commerce in the US. It does not have to file a Statement of Use (or accompanying specimen).
In Which Countries/Territories Must the Foreign Application be Filed and the Foreign Registration Issue?
The typical scenario under section 44 is for a foreign applicant to file a US application within 6 months after filing in its home country claiming 44(d) as its basis for filing and, once the foreign application has registered, claiming 44(e) as its basis for registration. But it does not have to be done this way. A section 44(d) claim can be based on one application and the 44(e) claim can be based on a different registration. The registration may even issue from a different country than the one in which the application used for section 44(d) was filed.
To add another wrinkle, the 44(d) application has to be filed in a contracting state, but that state does not have to be the applicant’s country of origin (although applicant’s country of origin must be a contracting state) and does not itself have to proceed to registration. In contrast, the 44(e) registration must be from the applicant’s country of origin, which has to be a contracting state.
What Goods/Services Can Be Included in the US Application?
Typically, the section 44 application contains the same goods/services as the foreign application upon which it relies. While uniformity between the applications is not checked by the USPTO, the examiner will check the foreign registration once it is submitted to make sure that the scope of the identification in the US application does not exceed the scope in the foreign registration. So, if goods/services were deleted from the foreign application during prosecution, the examiner will likely also require them to be deleted in the the US application.
How Does Section 44 Interact With Sections 1(a) and 1(b)?
An applicant may claim more than one basis for registration. For example, section 44(e) may be claimed in addition to section 1(a). Also, some goods may be registered under section 44(e) while others register under 1(a) within the same application.
To make things even more complicated, bases can be “mixed and matched.” If an applicant properly claims §44(d) as a basis for receipt of a priority filing date and asserts §1(a) as a basis for registration, the applicant may elect not to perfect the §44 basis and still retain the priority filing date.
As a practical matter, if the foreign registration has not issued by the time the US application is through the exam phase, the application will be suspended pending issuance of foreign registration, even if the application could proceed to registration based on a 1(a) claim. Similarly, if the applicant has already perfected the 44(e) basis but has also made a 1(b) claim, the application will not proceed to registration until the requirements of 1(a) are fulfilled, that is, the mark is in use in the US.
Avoiding Section 44 Pitfalls
First, you want to make sure not to miss filing within the 6-month window. Foreign applicants can still file after this date, but they will not benefit from the foreign priority date.
Also, remember that the foreign registration must be issued in the applicant’s country of origin. If for some reason the mark is not going to be registered in the country of origin (or one of the applicant’s countries of origin – an applicant can have more than one), the applicant may need to plan for the registration to issue under 1(a) instead, which means planning on demonstrating use in the US.
A technical item: if the foreign registration is not in English, the applicant must include a translation along with the foreign registration certificate.
If different goods/services are filed under different and multiple bases, it can be challenging to keeping track of which goods/services are pending on what basis. Make sure that someone is assigned the task of understanding and tracking this.
Finally, tricky legal issues can arise with section 44 applications that include long, laundry lists of goods/services. Under section 44, the applicant must declare its bona fide intent to use the goods/services in the US, so foreign applicants may consider pruning these lists down according to their actual business plans before filing in the US.
I would be happy to answer questions about section 44(d) and 44(e). Foreign countries and attorneys who represent them are welcome to contact me with questions and to discuss other strategies for protection of trademarks in the US.