Filing Under Section 44(d) of The Trademark Act

Section 44(d) of The Trademark Act provides an applicant with a basis for receipt of a priority filing date, but not a basis for publication or registration. To be eligible to file under this basis at the USPTO the applicant must (1) have a "country of origin" that is a party to an international treaty or agreement with the U.S. that provides a right of priority or must extend reciprocal rights to priority to nationals of the U.S.; and (2) a foreign application that was filed in a country that is a party to a treaty or agreement with the U.S. that provides a right of priority or extends reciprocal rights to priority to nationals of the U.S.; and (3) the U.S. application must be filed within six months of the first foreign application in a treaty country.

However, the foreign application does not have to be filed in the applicant's country of origin; unlike, Section 44(e) which does require that the country that issues the foreign registration that is relied upon for priority purposes be the applicant's country of origin. The definition of "country of origin" is as follows: "the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national." It's possible for a trademark applicant to have more than one country of origin. See TMEP §1002.04. Under Section 44(d) the applicant must include in the application, a statement claiming a bona fide intent to use the mark in commerce in the U.S. even if it also includes a use-based claim as well. In addition, the identification of goods and or services in the U.S. cannot exceed the scope of the foreign application. Lastly, the priority filing date will constitute a constructive use date of first use in the United States pursuant to 15 U.S.C. §1057(c) and TMEP § 201.02.

Also, it is important to highlight the fact that the application relied upon in the foreign country must be the first trademark application filed in any treaty country for the same mark and for the same goods and services. Therefore, an applicant claiming Section 44(d) as a filing basis must also establish another basis for publication and registration. See the firm page entitled, Determining Which Filing Basis Is Appropriate For U.S. Trademark Application, to review the other possible bases to include in the trademark application. For example, if the first filed application in a treaty country is filed in Italy and identifies dresses and shoes, and the applicant subsequently files in France for dresses, shoes and hats, and then within six months files in the U.S. based on a priority claim of the French registration, only "hats" will qualify under a 44(d) priority claim in the U.S. If the Examining Attorney determines not all of the goods and services are entitled to a priority claim under 44(d), he must indicate which goods and services have priority, and for those that do not, a new conflict search of the USPTO records must be conducted.

A unique situation that may arise, is that an Examining Attorney may discover a conflicting application entitled to priority under 44(d) after taking action to move another trademark application along. If this occurs, the Examining Attorney should issue a supplemental action to correct the situation. On the unlikely chance that the conflicting mark already registered, the USPTO doe not have jurisdiction to cancel the conflicting mark, and the 44(d) applicant will need to file a petition to cancel the conflicting registration with the Trademark Trial and Appeal Board.

If an applicant files under Section 44(d) and also identifies Section 44(e), the applicant must submit a true copy of the foreign registration to the USPTO either with the application or the Examining Attorney will require that it be submitted in the first office action. Any applicant relying on Section 44(e) of the Trademark Act will not be required to use the mark in commerce prior to the USPTO issuing a certificate of registration. This is an exception to the general rule that requires applicants to demonstrate use prior to registration. If you have questions regarding whether Section 44(d) or if you have other questions regarding designating a filing basis, please do not hesitate to contact the firm for a courtesy consultation.