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.