Filing Foreign Trademarks in the United States
Businesses seeking to enter the U.S. market that have trademarks registered in another country may use those trademark registrations as a basis for a United States trademark registration. Using a foreign trademark application, you may seek to register the same trademark in the U.S. under Section 44(d) of the Trademark Act. If you have a foreign trademark registration, you may seek to register the same trademark in the U.S. under Section 44(e) of the Trademark Act. Applying under Section 44(d) or (e) can be convenient to foreign businesses because evidence of use in commerce in the United States is not necessary to gain a registration.
What are the differences between Section 44(d) and 44(e)?
If your foreign trademark is a pending application, then the basis for the U.S. trademark application is Section 44(d). On the other hand, if you are using a foreign registration, then the basis is Section 44(e). Applications under Section 44(d) must perfect to Section 44(e) by showing proof of the foreign trademark registration in order to proceed to registration.
Requirements when relying upon a foreign trademark for Section 44
- Priority claim within six months
When filing under Section 44(d), your foreign application must have been filed within the past six months. You must identify the filing date of the foreign application, the country in which it was filed, and the serial number of the foreign application. You do not need to submit a copy of the foreign priority application. If six months have passed since you filed your foreign application, you may still file an application, but you will have to select a different basis and will not be able to claim priority of the foreign filing date.
If you want to rely on your foreign application solely to claim priority, then you may apply for registration in the U.S. under Section 1(a) actual use or Section 1(b) intent-to-use basis.
- Eligible Applicants
Section 44 applications are only available to applicant’s whose country of origin is a party to an international treaty or agreement with the U.S. or extends reciprocal registration rights to U.S. nationals. Your foreign application or registration must be from your country of origin, and you must be the owner of the valid foreign application or registration. Note that merely shipping products to or the presence of applicant’s wholly-owned subsidiary in another country does not establish a country of origin.
- Same mark
The mark in your U.S. trademark application must be the exact same mark as the mark in your foreign application. This means that if the mark in your foreign application is a word mark in standard characters, then the mark in the U.S. application must also be a word mark in standard characters. Accordingly, if the mark in the foreign application consists of a design mark with distinct colors, the mark in the U.S. application must also have the same design with the same colors.
- Bona fide intention to use
You do not need to file an allegation of use and prove use in commerce in the U.S. for your Section 44 application to register. Nevertheless, you must provide a verified statement that you have a bona fide intention to use the mark in commerce in the U.S. If you relied on Section 44(d) solely to receive priority and relied on another basis as well, you will to provide evidence of use in commerce in the U.S.
- Scope of the identification
Typically, the identification of goods or services in the U.S. trademark application should be the same as that in the foreign application or registration. However, because it is common for many foreign trademark offices to accept broader descriptions of goods and services than the USPTO, you may have to narrow the scope of the identification of goods or services when filing the U.S. application.
- Foreign registration
Whether you filed under Section 44(d) and must perfect to 44(e) to register or filed your application under Section 44(e) from the start, you must submit a copy of the foreign registration certificate along with a translation, if the document is not in English. If you are perfecting a Section 44(d) application to 44(e) and relied on some other basis, at this time, you must decide if you will keep the Section 1(a) actual use or Section 1(b) intent-to-use filing basis. If you decide to keep the Section 1 basis, you will have to file an allegation of use with evidence of use in commerce in the U.S.
One of the most important differences between filing under Section 44(d) and filing under 44(e) lies in date of use of the mark. If you file under Section 44(d), the constructive use date would be the application filing date in the foreign country; on the other hand, if you file under Section 44(e), the constructive use date would be the application filing date in the U.S.
Lastly, it is important to note that once your U.S. mark is registered under Section 44, the U.S. registration no longer relies upon the underlying foreign registration. Like any other U.S. trademark registrant, you will need to prove use, both during the sixth year after the registration of your mark and again after ten years at the time of the renewal of the registration. Thus, if you have not made any actual use of your mark in U.S. commerce since your trademark’s registration, you may later be at risk of losing your rights to the registered mark in the U.S. for abandonment or lack of actual use. Therefore, once your mark is successfully registered, it is advised that you start using the mark in U.S.
Authors: Olivia Kim (law clerk) & Karen Y. Kim
This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.