Relying On Section 44 Of The Trademark Act For A Filing Basis

A frequently asked question in our trademark practice is what filing basis should the trademark applicant rely on when filing its trademark application with the United States Patent & Trademark Office. There are five filing bases to choose from to fulfill the statutory requirements when filing a trademark application. For details on the five bases, see our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application. This blog post will focus on Section 44 of the Trademark Act that allows a trademark applicant to utilize a previously filed foreign application or a previously issued foreign registration as a filing basis.

Section 44 of the Trademark Act (15 U.S.C. §1126) applies to two types of trademark applications. Section 44(d) pertains to applications relying on foreign applications to secure a priority filing date in the U.S. Section 44(e) is relevant to applications relying on the ownership of a foreign registration for U.S. registration. A trademark applicant asserting 44(d) must assert another basis for registration since 44(d) provides a basis for a receipt of a filing date, but not a basis for publication or registration. For more details on this concept, see the Trademark Manual of Examining Procedure (“TMEP”) §1003.03. If an applicant asserts 44(d) and 44(e) as filing bases the applicant must assert a verified statement that the applicant has a bona fide intention to use the mark in commerce, but use in commerce is not required prior to registration (see TMEP §1009).

If a trademark applicant wishes to rely on Section 44 of the Trademark Act, it is prudent to consult with experienced trademark counsel. This section of the Trademark Act has a tendency to be misunderstood. As stated above Section 44(d) only applies to receiving a priority filing date. Therefore, if you include Section 44(d) as a basis for filing the application, before the application can be approved for publication or registration, the applicant must establish a basis under another section of the Trademark Act. In addition, the U.S. trademark application must be filed within six months of the filing date of the foreign application.

Determining what other basis to rely on may require some in depth consultation with trademark counsel. Determining if use in U.S. commerce is appropriate or if the applicant has a bona fide intent-to-use the mark in commerce will require a fact-based analysis. However, determining if a 44(e) basis is appropriate will be a more challenging task. To be eligible for trademark registration under Section 44(e) of the Trademark Act, the applicant’s “country of origin” must be a party to a treaty or agreement with the U.S. that provides for registration based on ownership of a foreign registration or must extend reciprocal registration rights to nationals of the U.S. Moreover, the applicant must be the owner of a foreign registration in the applicant’s “country of origin”.

A country of origin is the country in which the applicant has a bona fide and effective industrial or commercial establishment, or one in which he is a domicile or a national of the country. In the case of Fouad Kallamni v. Asad A. Khan, 101 USPQ2d 1864 (TTAB 2012) [precedential], the Board held that an effective industrial or commercial establishment is defined as the place where one is permanently fixed for business with fixtures and an organized staff. It was held that a mere office, storehouse, or postal address is insufficient. Factors to be considered are the presence of production facilities, business offices, and personnel.

A country of origin cannot be established simply by relying on the contractual relationship with a licensee in another country where the trademark owner does not maintain a place of business. It is critical that the applicant can demonstrate that he is the owner of a foreign registration in the applicant’s country of origin if the applicant intends to rely on Section 44(e) of the Trademark Act. Otherwise, the applicant should select another filing basis in addition to seeking a priority filing date under Section 44(d) of the Trademark Act. If you have questions, pertaining to the proper filing basis for your trademark application, kindly contact our office for a courtesy trademark consultation.