The Section 44(d) trademark filing basis is applicable to certain trademark applications filed with the United States Patent and Trademark Office (USPTO). Most of the time, trademark applications are filed under with Section 1(a) (use in commerce) or Section 1(b) (intent to use). However, Section 44(d) allows the owner of a foreign trademark application to rely on its foreign application to secure a priority filing date in the United States. What does this mean? Well, it means that the owner’s USPTO trademark application filing date will be considered to be the date on which the foreign trademark application was filed.
An Example of How Section 44(d) Works
Let me demonstrate how Section 44(d) actually works. Let’s say an Australian company files an Australian trademark application on January 5, 2020. On April 5, 2020 (three months later), the Australian company utilizes Section 44(d) to file a trademark application with the USPTO seeking registration of the identical mark for the same products/services. The USPTO will consider the filing date of the company’s USPTO trademark application to be January 5, 2020, not April 5, 2020. This means that the company’s trademark application has priority over every other trademark application that was filed with the USPTO between January 5, 2020 and April 5, 2020. That’s pretty powerful stuff considering that tens of thousands of trademark applications were likely filed with the USPTO during those three months.
Who Can File Under Section 44(d)?
Not all owners of foreign trademark applications are eligible for a priority filing date under Section 44(d). Here are the two threshold requirements for taking advantage of Section 44(d):
- The owner’s “country of origin” must be a party to a treaty/agreement with the United States that provides a right of priority to United States nationals. Section 1002.04 of the Trademark Manual of Examining Procedure (TMEP) defines “country of origin,” but it’s generally considered (1) the country in which the owner has an industrial or commercial establishment, (2) the country in which the owner is domiciled, or (3) the country of which the owner is a national. The TMEP also lists the foreign countries with which the U.S. has the requisite treaties/agreements.
- The foreign trademark application itself must have been filed in a country that’s a party to a treaty/agreement with the United States that provides a right of priority to United States nationals.
If the owner of the foreign trademark application cannot meet both of these requirements, then it must rely on either Section 1(a) or Section 1(b) as a basis for filing a trademark application with the USPTO rather than Section 44(d).
What are the Requirements for Receiving a Priority Filing Date?
Even if the owner of a foreign trademark application meets the two threshold requirements discussed above, the following requirements must also be satisfied in order to receive a priority filing date under Section 44(d):
- The foreign trademark application must be the owner’s first application filed in any treaty country for the same trademark and for the same products/services, OR the first-filed application has been withdrawn, abandoned, or otherwise disposed of without having any rights outstanding and has not served as a basis for claiming a right of priority.
- The claim of priority must be made within six months after the filing date of the foreign trademark application.
- The owner of the foreign trademark application must provide a verified statement that it has a bona fide intention to use the mark in commerce.
- The trademark in the Section 44(d) application must be identical to the trademark in the foreign trademark application.
- The products/services listed in the Section 44(d) application cannot be broader than the products/services listed in the foreign trademark application.
Basis for Filing vs. Basis for Registration
It’s very important to note that Section 44(d) only provides a basis for receipt of a priority filing date. Section 44(d) does not provide a basis for registration of a trademark with the USPTO. As such, the owner of a trademark application filed under Section 44(d) will still need to eventually establish a valid basis for registration of its trademark in the U.S. under either Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration).
Questions About the Section 44(d) Trademark Filing Basis?
I’m experienced US trademark attorney Morris Turek. If you’re still a bit confused about the Section 44(d) trademark filing basis and whether it might apply to your particular situation, please feel free to reach out to me for a no-charge consultation. I may be contacted by phone at (314) 749-4059, through email at morris@yourtrademarkattorney.com, or by completing the contact form located below. I look forward to speaking with you soon.