Can you obtain a US registration for a foreign registered trademark?
Many international trademark owners are familiar with the Madrid Protocol where you file your first trademark application in your home country. Afterwards, you file a Madrid application designating multiple foreign countries. Apart from the Madrid Protocol, a foreign registered trademark owner can still register that same trademark in the US without showing any use in the US.
It is called Section 44(e). Owners of foreign trademark registrations can take advantage of Section 44(e) by filing US trademark applications for the same marks. If everything goes smoothly, you can end up with a US trademark registration without having to show any sales in the US.
Need to register a foreign trademark in the US? Contact US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to see how we can help.
Do all US trademark applications require evidence of use of the mark in US commerce?
Not exactly. All trademark applications based on actual use require evidence of use of the mark in US commerce. To complete an Intent-To-Use application, proof of use must eventually be submitted.
Under Section 44(e), however, an applicant need not show usage of a trademark in the US. Instead, they can rely on a foreign registration for the same mark as applied for.
What if the foreign trademark has not yet registered?
The benefit of a Section 44(e) foreign registration basis applies only when you have a foreign registration for the same mark as applied for in your US trademark application. In certain situations, you may have a pending foreign trademark application which served as the priority date for US application. This is known as a Section 44(d) filing basis.
In these situations where your US application is linked to a counterpart foreign application, you may suspend your US application as you wait for your foreign trademark application to mature into a registration. Essentially, a 44(d) filing basis can turn into a Section 44(e) registration basis.
Can your US trademark registration get canceled for failure to use the mark?
Yes, third parties may attempt to cancel your US registration for nonuse. One possible attack is to file a cancellation proceeding with the Trademark Trial and Appeal Board (TTAB).
Another way to attack a US trademark registration based on nonuse is expungement. This option is available only between 3 years and 10 years from the date of registration. Section 44(e) trademark registration owners can protect themselves against expungement by making sure they use the mark promptly after registration, and well before the 3-year anniversary of the registration date.
