Considerations When Registering a Foreign Trademark in the United States: §44(d) vs. §44(e)

In our digital world, most businesses cross international lines (knowingly or unknowingly). After all, you can’t control who can view your online content, no matter what country they’re in. Because of this fact, if your business is marketing online in any capacity, and you have customers or clients in other countries, you must assess whether or not you need to extend your IP protection into those foreign countries. Namely, if you are a non US resident, you must discern whether or not you should file in the US.

What does a United States trademark registration look like?

The United States Patent and Trademark office offers multiple forms of trademark applications. Typically, for domestic registrants, these are either 1(a) “actual use” or 1(b) “intent to use” applications. However, for business owners domiciled outside the United States who wish to extend their trademark protection into the states, the USPTO provides various forms of trademark applications. If you have an existing registration in your own country, there are methods of filing in the US that will allow you to benefit from your earlier filed mark (or application). The choice of which will be most suitable for your business will be a case-by-case analysis, but in general, if you have an existing foreign registration (or application) a Section 44(d) or Section 44(e) registration must be examined. Note: A US licensed attorney is required to register a trademark in the US.  

SECTION 44(D) APPLICATIONS:

  • WHAT IS IS: 
    • An application that allows holders of foreign applications corresponding US application STATUS, if the US filing occurs within 6 months of the original foreign application. 
  • WHY USE IT OVER OTHER APPLICATIONS: If properly filed within the 6 month time frame, applicant has “foreign priority basis”. In other words, the 44(d) filing takes priority of the earlier filing date (of the original application), and the original filing date in the foreign filing is considered the effective filing date of the US application.  
  • Why is this beneficial? The United States’ filing system is a “race to the courthouse” system, meaning the USPTO will generally honor the first filed application. By achieving “foreign priority basis”, a foreign applicant may be able to “beat out” a later-filed application. For illustrative purposes: Say you are an Australian business who began using your trademark in March 2020. You file your application in Australia and receive your registration in May 2020. In April, a competitor sees your name, likes it, and in June, decides to try to file before you in the US. If you successfully file a 44(d) application, your application will receive priority over the other, because the USPTO will recognize your priority date of May over their June application.  (See TMEP Section 1003.05 Section 44(d) and Priority for Publication).
  •  REQUIREMENTS:
    • Your foreign application must originate from your own country of origin.
    • You must file in the US within 6 months of first-filed foreign application.
    •  In your 44(d) application, you must provide a verified statement of bona fide intent to use the mark in commerce, identify the filing date, country, and serial number of that first application, and file under the exact same mark and exact same classes (identification of goods and services) as your original foreign application. 
    • Your country of origin must be party to an international treaty or agreement with the US allowing for priority. 
    • Have a US licensed attorney file your application for you 
  • Potential problems:
    • Your country of origin’s method of identifying goods and services in “classes” may be written more broadly than what is allowed by the US. This means that the USPTO may require the applicant’s attorney to narrow or clarify said classes in an office action. No matter whats, the scope of the goods and services in your US application may never exceed the scope of the first filed foreign application.
  • Fine Print: Miss the 6 month window? That’s not the end of the world, but you will lose the benefit of your “priority of publication” date, which could affect a “race to the courthouse” scenario as mentioned above.

SECTION 44(e) APPLICATIONS:

  • WHAT IS IS: 
    • An application that can be used by foreign holders of registrations 
  • Difference with 44(d): 44(e) applications can be used any time after the corresponding foreign trademark has matured into registration. 
  •  REQUIREMENTS:
    • When filing your Section 8 or Section 8/9 renewal, you must demonstrate proof of actual use to overcome arguments of abandonment (and is additionally required in infringement-based litigation in court).  
    • You must have a bona fide intent to use the mark in US commerce at the time of filing
    • When filing, you must submit a copy of your foreign registration at the same time, and follow the same rules of a §44(d) application in terms of classes 

Overall:

If you are a business owner in a country other than the US, but you sell goods or services in the US (even digitally), you must consult with a US-licensed attorney to determine whether or not a US trademark is appropriate. Email us at hello@paigehulse.come for more information!

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