OBTAINING US REGISTERED MARKS BY FOREIGN APPLICANTS UNDER      SECTIONS 44(d) and 44(e) of the TRADEMARK ACT

TAKE HOME POINTS

1. Have a strategy in place before spending money seeking foreign trademark protection.
2. Work with an attorney who understands the nuances of foreign trademark applications within target jurisdictions.
3. For applicants wishing to obtain a US registered mark, understand what is meant by bona fide use to avoid having any US registered mark cancelled in the future.
4. Conduct a thorough knock out search to identify potential registration risks resulting from foreign applications that could claim a priority benefit if the foreign applications are filed in your target jurisdiction.
5. Keep in mind that under § 44(d),any US registration is dependent upon the actual registration of the mark in the designated country.  “Slow” registration countries may slow up a US registration.  
6. For § 44e applications, keep an eye on any imminent renewal dates for the underlying foreign registration since the underlying foreign registration must be in effect for issuance of any § 44e application by the USPTO.

INTRODUCTION

Trademark rights are territorial; for trademark owners to have trademark protection in a particular country, the owner must have a registered trademark in that country.   Any trademark owner, whether U.S. based or non-U.S. based can file a trademark application under 35 U.S.C. §1051(a) [mark already in use in commerce] or §1051(b) [the applicant has a bona fide intent to use the mark in the U.S] of the Lanham Act.  In both cases, the applicant must provide proof that the mark is being used in commerce for a registration to issue by providing specimens (photos of packaging, website screenshots, etc.) showing usage of the mark in commerce. 

This blog discusses two avenues available to a non-US citizen or foreign company wishing to seek the registration of their marks within the United States under Sections 44(d) and 44e of the Trademark Act.   With both avenues, the foreign applicant must have a bona fide intent to use the mark in U.S. commerce; however, in contrast to 1a and 1b applications, actual proof (i.e. submission of specimens) of such usage is not required for the US registration to issue.  The foreign owners of US registered marks should be aware that specimens showing usage in the US will be required for later renewals of the US trademark.  Failure to provide satisfactory specimens showing use in US commerce will result in cancellation of the marks.  

A future blog will discuss trademark registration approaches under the Madrid protocol.  Regardless of the type of foreign application, all foreign applications are examined in accordance with U.S. trademark law governing the issuance of registered trademarks. 

Trademark law is a complex area of the law despite its apparent simplicity.  It is thus not surprising that the USPTO now requires that all foreign applicants are represented by a US licensed attorney since US trademark law is arguably more “demanding” as it relates to registration compared to many other jurisdictions. 

Given the costs involved, foreign trademark registration procurement plans should align with the trademark owner’s global branding strategies.  For example, a trademark owner should be cautious in ensuring that its brand matches the owner’s desired cultural perceptions where it is to be used. 

For a business, perhaps there is nothing more frustrating and potentially costly than to start developing a brand only to find out that the business is going have legal issues either in: 1) obtaining registration in desired jurisdictions; or 2) being sued for infringement; or both.   Importantly, all trademark applicants who are considering a global trademark registration strategy should not ignore priority rights potentially belonging to others when either conducting trademark knockout searches or when priority issues arise in a proceeding before the Trademark Trial and Appeal Board.  Just because one’s mark is registered in e.g., the UK does not mean that it will be registered in the US.   Alternatively, a foreign mark holder who timely files an application before the USPTO could prevail in a registration contest and prevent registration of a “competing” mark by a US-based applicant.  Trademark law rewards those first in line so to speak, and priority use rights are a critical aspect of trademark law in the US. Stay tuned for blog on a recent TTAB decision that drives home this very point.

Two areas involving foreign applications filed in the USPTO that many find confusing are: a) filing dates versus effective filing dates and constructive use dates; and b) what is meant by bona fide use.  Sections A and B discuss these 2 concepts.   Sections C and D discuss the requirements for filing a § 44(d) and 44e applications. 

DISCUSSION

A. Understanding Filing Dates in the Foreign Trademark Application Process Under § 44(d) and § 44(e).  This section explains the relevant dates in the trademark prosecution process and any subsequent registration.

Filing Date:  When an application is filed with the USPTO, the filing date is equal to the date on which all of the necessary parts of the application are received.   For applications filed as 1a or 1b applications, the filing date determination is straight forward.  Further, since the vast majority of applications are filed via the USPTO’s electronic filing system, the chances of missing a necessary part are slim.

Effective Filing Date.  For 1a and 1b applications filed with the USPTO, the filing date is generally also the application’s effective filing date.  However, as we will see in the following discussion, with foreign applications filed under § 44(d), the effective filing is earlier than the USPTO’s filing date.  This is because the foreign applicant is entitled to claim priority to the applicant’s earlier filed foreign application date under § 44(d) providing the application is filed with the USPTO within 6 months of foreign application’s filing date. 15 U.S.C. § 1126(d).  That is, the effective date is earlier than the date the application was filed in the USPTO.  The effective filing date is used to determine priority for publication or issuance of the registration.  Where the § 44(d) application’s effective filing date is before the effective filing date of a 1a or 1b application for marks having the same commercial impression for similar goods/services, the § 44(d) will “win” registration rights providing the application meets all of the USPTO’s requirements for registration (absent a first use challenge).  The USPTO’s database for 44(d) applications includes the US filing date and the effective filing date. 

Example.  A 1b application was filed for the mark YPEC on Dec. 1, 2024 for exercise equipment under IC 028 by a US company.   A § 44(d) application was filed for the mark YPECS on February 14, 2025 claiming priority to an application filed in Brazil on Sept. 14, 2024 for exercise equipment.  The Brazilian application’s effective filing date is Sept. 24, 2024.  The Brazilian applicant will have first dibs on obtaining a US registration providing all USPTO trademark registration requirements for the § 44(d) application are met.  

Constructive Use Priority.  Constructive use priority is established when any application filed with the USPTO is filed and eventually matures into a registration.  Constructive use priority is the application’s filing date.   Upon registration, constructive use priority affords the applicant nationwide priority over others, except: (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application under 15 U.S.C. §1126(d) (e.g., a 44(d) application).  See also § 201.02 of the TMEP.  Regarding factor 1 above, note that priority of use contests generally arise as opposition proceedings where the opposer claims prior use of the mark in commerce.  Click here for a blog on prior use.  

B. The Legal Standard for Bona Fide Intent.  It is important to note that all “bona fide intent” applicants for registered trademark protection in the US must indeed have such an intent as it relates to all of the application’s listed goods/services.  Wishful thinking or mere statements involving future use do not count.  The applicant should have a verifiable intent to use the trademark in commerce as of the date the application is filed.  Registered trademarks may be subject to cancellation if the registrant cannot prove the requisite bona fide intent.  Here is the link to a previous blog about bona fide intent.  Importantly, all “bona fide intent” applicants should retain documentary proof such as business plans, contracts, etc. if the issue of bona fide intent ever arises.  

C.  Applications Filed Under § 44(d).   Here, the foreign applicant may claim as its US application’s priority date the foreign application’s filing date providing that the US application is filed within the 6-month period after the foreign applicant files the foreign application.   The priority date is a place holder meaning that an application for a potentially competing mark filed after the 44(d) application’s priority date will be second in line so to speak when it comes to registration rights. If a registration issues for the § 44(d) application, the second in line mark will likely be out-of-luck.

For a foreign applicant relying on § 44(d) to obtain a U.S. registered trademark, the following criteria must be met:

(1)The applicant must timely make the claim of priority with the 6-month window referenced above.

(2) The applicant must provide the foreign application’s filing date, serial number, and the foreign country of the first regularly filed foreign application. 

(3) The applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce.  If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.   Specimens showing actual usage are not required.

(6) An English translation of the foreign translation.  Our firm recommends that any such translation is prepared by a certified translator.

(7) The scope of the identification covered by the § 44(d) basis may not exceed the scope of the identification in the foreign application.                                                                       

(8)  If the § 44(d) application meets the USPTO’s requirements for registration and has matured into a registered mark in the originating country, the § 44(d) applied-for mark will be registered in the US.  The constructive use priority date of the US registered mark will be the date the 44(d) application was filed with the USPTO.  

(9) If the foreign application is not registered by the other country, the US application cannot be amended to assert another filing basis.  Instead, a brand new 1a or 1b application must be filed.  This is because the 44(d) application is specifically designed to be used as a basis for filing a U.S. application based on a foreign trademark application that has not been registered. The applicant will be required to establish use in commerce as a prerequisite for registration of any 1a or 1b application. 

D. Applications Filed Under § 44(e).   Here, the foreign applicant relies on a foreign registration to obtain a US registered mark.

(1)The applicant must be the owner of a valid registration in the applicant’s country of origin as of the date the U.S. application is submitted. 

(2) The applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration, or must extend reciprocal registration rights to nationals of the United States. 

(3) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. 

(4) The mark shown in the foreign registration and the U.S. application must be identical.

(5) The applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce.  If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.   Specimens showing actual usage are not required.

(6) An English translation of the foreign translation.  Our firm recommends that any such translation is prepared by a certified translator.

(7) The scope of the identification covered by the §44(e) basis may not exceed the scope of the identification in the foreign registration.   Note that U.S. trademark law requires specificity in the description of goods and services. 

(8)  Here the constructive use priority date is the date the § 44e application was filed. 

(9)  The foreign trademark registration must be in force on the date the § 44(e) application issues to registration in the U.S.  If the foreign registration is canceled or otherwise becomes invalid before the registration date of the Section § 44(e) application, then the application must be amended to assert another valid filing basis, such as Section 1(b) (intent to use).   The applicant will be required to establish use in commerce as a prerequisite for registration of any new 1a or 1b application. 

CONCLUSIONS

Filing US trademark applications under § 44(d) or § 44(e) provide foreign applicants with an opportunity to obtain a U.S. registered trademark without having to yet be in actual commerce for the registration to issue.   These filing options are in line with the registration requirements of other countries which typically do not require actual use prior to registration.  Nevertheless, the filing of an application under these sections does not guarantee that a registration will issue.  All foreign applicants should understand the registration requirements and be aware of the concept of priority of use under US trademark law. And remember that maintenance of the US registered mark will require proof of use in commerce in the US.

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

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