The Section 44(e) trademark filing basis allows the owner of a foreign trademark registration to base its U.S. trademark application on the foreign registration. As a practical matter, Section 44(e) applies only to a relatively small number of trademark applications filed with the United States Patent and Trademark Office (USPTO). The vast majority of trademark applications are filed under Section 1(a) (use in commerce) or Section 1(b) (intent to use). In addition, some trademark applications can be filed under Section 44(d), which allows the owner of a foreign trademark application to use its application to obtain a priority trademark filing date in the United States. This article explains the benefits of Section 44(e) and the requirements for utilizing this valuable tool.
What is the Benefit of Filing Under Section 44(e)
The most significant benefit of filing under Section 44(e) is that the owner of the foreign trademark registration doesn’t have to demonstrate use of its trademark in the United States to secure its U.S. registration. In other words, the owner never has to file the Statement of Use or an Amendment to Allege Use at any time during the US trademark application process.
Who is Eligible to File Under Section 44(e)?
Not all owners of foreign trademark registrations can file under Section 44(e). The foreign trademark registration owner must meet the following two requirements:
- The owner’s “country of origin” must be a party to a treaty/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 United States. 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 sets forth the countries with which the U.S. has the requisite treaties/agreements.
- The foreign trademark registration itself must be valid and must be from the owner’s country of origin.
If the owner of the foreign trademark registration is unable to satisfy both of these requirements, then it must use Section 1(a) or Section 1(b) as a basis for filing its trademark application with the USPTO.
What are the Requirements for a Section 44(e) Application?
Assuming the foreign trademark registration owner meets the two eligibility requirements, the Section 44(e) trademark application itself must satisfy the following requirements:
- The Section 44(e) application must include a copy or photocopy of the foreign registration.
- The owner of the foreign trademark registration must provide a verified statement that it has a bona fide intention to use the mark in commerce.
- The trademark in the Section 44(e) application must be identical to the trademark in the foreign trademark registration.
- The products/services listed in the Section 44(e) application cannot be broader than the products/services recited in the foreign trademark registration.
Ownership and Status of Foreign Trademark Registration
It’s extremely important to note that the applicant named in the Section 44(e) application must be the owner of the foreign trademark registration on the filing date of the Section 44(e) application. In addition, the foreign trademark registration must be in force on the date the Section 44(e) application issues to registration in the U.S. If the foreign registration is canceled or otherwise becomes invalid before the registration date of the Section 44(e) application, then the application must be amended to assert another valid filing basis, such as Section 1(b) (intent to use).
Do You Need More Information?
I’m experienced US trademark attorney Morris Turek. If you have questions about the Section 44(e) trademark filing basis, or perhaps need to know whether you’re eligible to take advantage of Section 44(e), please don’t hesitate to contact me for your free consultation. I can be reached at (314) 749-4059, by shooting an email to morris@yourtrademarkattorney.com, or through my contact form found toward the bottom of this page. I look forward to speaking with you soon.