Foreign trademark application or registration?

An owner of a foreign trademark filing may apply for the same mark in the US. The most critical issue to determine upfront is whether the foreign filing is a pending application [Section 44(d)] or a registration [Section 44(e)]. If a foreign application is pending, then the US application must be filed within six months of the foreign filing date, and a priority claim will be made to secure the benefit of the earlier foreign filing date. If a foreign registration is being relied upon, the applicant is not under strict deadline so long as the foreign registration is in force (not yet expired) at the time the US registration is granted.

Another factor to consider early on is whether the mark will be used anytime soon in US commerce. If not, relying upon a foreign registration will speed up the US registration since the applicant will not have to show use in US commerce prior to securing the US registration. With these foundational issues in mind, let’s turn to the requirements for relying upon a foreign filing.

What are the requirements for relying upon a foreign trademark filing?

1. Applicant’s country of origin

The foreign registration must have been filed in the applicant’s country of origin which must be a party to an international treaty or agreement with the US. To establish a country of origin, the applicant may be domiciled, incorporated or organized in a treaty country.

Alternatively, the applicant may submit a written statement for the record stating that the applicant has had a bona fide effective industrial or commercial establishment in the foreign country during either the six-month period beginning at the filing date of the foreign application or as of the date of issuance of the foreign registration [see TMEP Section 1002.04].

In the TTAB case of Fouad Kallamni v. Asad A. Khan, 101 USPQ2d 1864 (TTAB 2012) [precedential], the Board defined “establishment” as “the place where one is permanently fixed for . . . business; . . . an institution or place of business, with its fixtures and organized staff.” Relevant factors to consider include the presence of production facilities, business offices and employees.

A country of origin cannot be established by relying upon the presence of an independent entity that does business with the applicant. Mere shipments of products to a particular country would be insufficient to establish it as a country of origin.

Accordingly, an applicant may have multiple countries of origin.

For the sole purpose of establishing a priority date under Section 44(d), the foreign application need not be filed in a country of origin if the applicant will not rely on the priority application for a Section 44(e) foreign registration basis. [See TMEP 1002.02]. In this situation, the applicant must still show use of the mark in U.S. commerce by filing a Statement of Use.

An applicant may file under Section 44(d) or Section 44(e) based on a prior trademark filing in Taiwan [see TMEP 1002.03].

2. Exact same mark

The drawing of the mark in US application must be “a substantially exact representation of the mark as it appears in the drawing in the foreign registration. So, for example, if the mark in the foreign registration is in standard characters (word mark), then the mark in the US application must also be in standard characters. If the foreign mark consists of a design mark (e.g., logo) with colors, that same design mark with the same colors must be filed in the US application.

3. Scope of goods/services cannot be broader than scope of foreign filing

Generally, the identification of goods and services in the US application should be the same as those in the foreign filing. However, many foreign trademark offices allow for broad descriptions of products and services which would be unacceptable with the USPTO’s trademark standards. Therefore, it may be necessary to clarify or narrow the scope of goods. [See TMEP Section 1402.01.(b)] In any case, the scope of the US identification of goods and services may not exceed the scope of the foreign identification.

4. For priority filing date based on foreign application under Section 44(d)

To rely upon a foreign application filed within the past six months, the applicant must identify the filing date of the foreign application, the country of filing, and the serial number of the foreign application. A copy of the foreign priority application is not required.

When the foreign application matures into a registration

Copy of foreign registration required

If and when the foreign application becomes a registration, an applicant may then rely upon the foreign registration to obtain the US registration without having to first show use in US commerce. This is known as a foreign registration basis under Section 44(e). The applicant must submit a copy of the foreign registration, which can be a photocopy that need not be certified. If the foreign registration is not in English, an English translation signed by the translator (swearing not necessary) must be filed. The applicant must identify the registration number and registration date.

Option to delete Intent-To-Use filing basis

Upon submitting a copy of the foreign registration, the filing bases of the US application may be amended to include a Section 44(e) filing basis. Accordingly, the applicant may delete the Intent-To-Use filing basis [Section 1(b)] and bypass the obligation to file a Statement of Use with specimens.

US registration exists independent of the underlying foreign registration

Once a US mark is registered under Section 44, the US registration exists independent of the underlying foreign registration [see TMEP Section 1015]. Owners of US registrations based on Section 44(e) should make use of the mark in the US promptly after the registration date to protect against attacks based on abandonment or lack of use in US commerce.

Basis for priority vs. basis for registration

Section 44(d) provides a basis for a priority date only, and not for registration. A basis for registration is still required under Section 1(a) (use), Section 1(b) (intent-to-use), or Section 44(e) (foreign registration). Therefore, it is possible for an applicant to rely on an earlier-filed foreign application for priority purposes only, but not for registration. Such an applicant would have to show use in US commerce in order to obtain the US registration.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
If you are a startup or small business, we want to help. Our mission is to equip entrepreneurs with solid IP rights that facilitate funding, growth and sales. Let's get to work! Direct: 949.223.9623 | Email: vlin@icaplaw.com