Rights and Priorities: Foreign Trademark Applicants and Section 44

Foreign Trademark Applicants – Breaking Down Section 44: How Foreign Trademark Applicants Can Obtain U.S. Trademark Protection

Section 44 of the U.S. Trademark Act, also known as the Lanham Act, provides an important and convenient avenue for foreign trademark owners to apply for trademark registration in the United States.

Foreign trademark applicants have two options under this Section of the Lanham Act, they can file a Section 44(e) application and use their foreign registration as the basis for obtaining a U.S. registration, or they can file a Section 44(d) application and rely on their foreign application to secure a priority filing date in the United States.

Eligibility of Foreign Trademark Applicants

The Lanham Act treats foreign and domestic applicants equally for U.S. registration, whether the application is grounded on the use of the trademark in interstate or foreign commerce, or the intent to use in commerce. However, Section 44 allows a foreign applicant from a qualified country to apply for U.S. registration from, or a pending application to register the mark, in its country of origin.

image of flags of the world - foreign trademark applicants

Section 44(d): Priority Filing Date for Trademark Registration

A foreign trademark owner can file a U.S. trademark application and claim priority based on a foreign trademark registration that was filed within six months prior to the U.S. application.

In a significant ruling regarding Section 44(d), the Court of Appeals for the District of Columbia held in SCM Corp. v. Langis Foods that, in this situation, the applicant’s foreign filing date alone establishes priority rights, even against a prior user of the mark in U.S. who began its use after the foreign filing date.

In effect, the foreign trademark applicants’ trademark will be treated as if it was filed on the same date as the U.S. application, which gives the foreign trademark holder priority over any subsequently filed U.S. trademark applications for the same or similar mark.

To qualify for priority filing under Section 44(d), the applicant’s country of origin must have a treaty or agreement with the United States that grants either a right of priority or reciprocal registration rights to U.S. nationals. Additionally, the foreign application that is used as the basis for the priority filing claim must be validly filed in such a country.

Note, however, that Section 44(d) provides a basis for filing and priority filing date but not a basis for publication or registration. Therefore, to claim priority under this section, foreign trademark applicants must also fulfill the requirements for Section 44(e), Section 1(a), or Section 1(b).

If the applicant meets the requirements under one of these sections and claims priority filing within six months of filing to register the trademark in a qualified country, the U.S. application will be considered filed as of the date of the foreign application was filed.

Section 44(e): Basing a US Trademark Application on a Foreign Registration

Section 44(e) is applicable to a limited number of trademark applications filed with the US Patent and Trademark Office (USPTO), as compared to the majority of trademark applications which are filed under Section 1(a) or 1(b).

Nevertheless, Section 44(e) offers notable advantages to foreign trademark owners. In particular, foreign trademark owners are not required to prove the usage of their trademark in the United States to obtain registration in the United States. This results in fewer filing requirements during the USPTO trademark application process.

Similar to Section 44(d), applicants who file under Section 44(e) must also belong to a country of origin that has a treaty or agreement with the United States enabling registration based on ownership of a foreign registration or providing reciprocal rights to U.S. nationals.

Foreign trademark applicants must also possess a valid registration in their qualified country of origin.

It’s crucial to note that the applicant that is named in the Section 44(e) application must be the owner of the foreign trademark registration on the filing date of the Section 44(e) application.

Section 1(b) “Intent to Use” and Section 44

Foreign registrations are immune from challenge for lack of use on or before the filing date. Nonetheless, the applicant must assert a bona fide intention to use the mark in commerce when filing the application and should be prepared to support that claim with documentation.

Generally, once an applicant demonstrates the required bona fide intention to use the mark in commerce, it can file an intent to use application under Section 1(b) and immediately secure constructive use priority. However, it may be advantageous for a foreign applicant to file under Section 44 since registration would not be contingent upon proving use in the U.S.

Do foreign trademark applicants seeking U.S. trademark have to be the same entity or person as the foreign holder of the trademark?

As previously mentioned, it is crucial to note that the Section 44 application requires the applicant to be identified as the owner of the foreign trademark registration at the time of the Section 44(e) application.

In other words, foreign applicants filing under Section 44 must own the foreign registration at the time of the U.S. application. However, the foreign applicant may assign the U.S. application to another foreign entity without transferring the foreign trademark rights.

Lastly, the foreign trademark registration must remain valid on the date of the Section 44 application is granted registration in the U.S.

If the foreign registration is cancelled or invalidated before the registration date of the Section 44 application, then the application must be amended to assert an alternative valid basis. We are your Orange County trademark and business attorneys and are available to discuss these issues and more.

If you need legal assistance, reach out to the founder of Cartee, LC, business, trademark and intellectual property attorney, Anthony Cartee, at (714) 942-2225, or via email inquiries@ac-legal.com, or schedule an appointment.