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Articles Tagged with Section 44(d) And Section 44(e) Of The Trademark Act

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A frequently asked question in my practice is what filing basis should our company rely on in applying for a U.S. trademark application. As many readers may know there are multiple filing bases and to learn more about the basic information for each filing basis, please review our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application. This post will delve into some of the more technical requirements for applicants relying on a foreign application or a foreign registration for a U.S. trademark filing. Please consult with trademark counsel if you plan to file under Section 44 of the Trademark Act, 15 U.S.C. §1126, as there are many nuances an applicant should understand before determining the appropriate basis for filing your U.S. trademark application.

For example, if an applicant wants to file based on Section 44(d) relying on priority of a foreign trademark application, the following requirements must be met:

(1) the applicant must have a country of origin (defined as “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.) that is a party to an international treaty or agreement with the U.S. that extends a right of priority or must extend reciprocal rights to nationals of the U.S. (See the TMEP Appendix B for qualifying treaties and Agreements); and

(2) the foreign application which is the basis of the priority claim must be filed in a country that is a party to an international treaty or agreement with the U.S. that extends a right of priority or must extend reciprocal rights to nationals of the U.S., but the application does not have to be filed in the applicant’s country of origin (as long as the applicant alleges either 1(a) or 1(b) as a basis for registration) UNLESS the applicant plans on relying on 44(e) for a basis for registration; and

(3) the applicant must file a claim of priority (file its U.S. application) within six months of the filing date of the FIRST filed foreign application (See TMEP 1003.01); and

(4) the goods and services (scope of the identification) of the U.S. trademark application cannot exceed the goods and services of the foreign filed application; and

(5) the applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce as of the U.S. application filing date.

An applicant filing under Section 44(d) will be asked in the TEAS application form if the applicant intends to rely on Section 44(e) as a basis for registration. If the applicant indicates that it will rely on §44(e), then the Examining Attorney will request the applicant submit a “true copy” of the foreign registration when it becomes available or the Examining Attorney may suspend the application while awaiting receipt of the foreign application. Thereafter, the Examining Attorney will issue inquiries via an Office Action, and the applicant will have six months to respond. If the applicant does not respond, the trademark application will be abandoned for failure to respond to an Office Action.

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