Appendix B - Members of International Trademark Agreements
The following is a list of members of international trademark agreements to which the United States is also a party.
If there is a discrepancy between the expiration of a foreign registration as listed here and the date listed on the foreign registration, the date listed on the foreign registration will be controlling.
Paris Convention for the Protection of Industrial Property
Under the Paris Convention, foreign applicants may seek U.S. registration, based on either (a) a valid registration, or (b) an application to register in any of the member countries listed below, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the foreign application. For updates to the list below, see the World Intellectual Property Organization’s home page at http://www.wipo.int/treaties/en/ip/paris/index.html.
Inter-American Convention
Under the Inter-American Convention for Trademarks and Commercial Protection (also known as the "Pan-American Convention"), foreign applicants may seek U.S. registration, based on either (a) a valid registration, or (b) an application to register in any of the member countries listed below, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the foreign application. See Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320 (TTAB 2007) ; British-American Tobacco Co., Ltd. v. Phillip Morris, Inc., 55 USPQ2d 1585 (TTAB 2000).
European Union Trademark
On December 20, 1993, the European Council issued Regulation No. 40/94, establishing a single system of trademark registration, known as the Community Trade Mark ("CTM"), which is alternative to the various registration systems of each nation within the European Union ("EU"), formerly known as the European Community (EC) or European Economic Community (EEC). European Union countries include all countries which are members of the European Union namely; Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the United Kingdom of Great Britain and Northern Ireland. For a complete, up-to-date listing of members of the EU, see the EU website at http://europa.eu/index_en.htm. For information on whether the scope of the CTM extends to certain territories associated with EU member states, and thus whether a CTM registration could serve as a valid registration from an applicant’s country of origin, see the document available at http://oami.europa.eu/en/mark/aspects/pdf/Geographical_scope_CTMR.pdf.
Effective March 23, 2016, OHIM was renamed the European Union Intellectual Property Office ("EUIPO") and the CTM was renamed the European Union trademark ("EU trademark"), and all existing CTMs and CTM applications automatically became EU trademarks and EU trademark applications. See Regulation (EU) 2015/2424, of the European Parliament and of the Council of 16 December 2015, 2015 O.J. (L 341) 21, available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/legal_reform/regulation_20152424_en.pdf; Press Release, OHIM, EU Intellectual Property Office – New Name for the EU’s Largest Intellectual Property Agency (Dec. 24, 2015), available at https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_ohim/press_releases/LR/opt_1/OHIM_trade_mark_reform_pr_en.pdf.
A foreign applicant may seek registration in the United States based on either (a) a valid EU trademark registration, or (b) a EU trademark application, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the EU trademark application. An EU trademark is registered for a period of 10 years, running from the date of filing, and may be renewed for 10 years. For further information about the EU trademark, see EUIPO’s website at http://oami.europa.eu.
World Trade Organization
The World Trade Organization ("WTO"), established on January 1, 1995, is the embodiment of the results of the Uruguay Round trade negotiations and the successor to the General Agreement on Tariffs and Trade ("GATT"). Article 4 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPs") contains a most-favored-nation clause under which any advantage a member gives to the nationals of another member must normally be extended to the nationals of all members. Section 44(b) of the Trademark Act, 15 U.S.C. §1126(b), provides that any person whose country of origin is a party to any convention or treaty to which the United States is a member is entitled to the benefits of §44. Accordingly, foreign applicants may seek U.S. registration, based on either (a) a valid registration, or (b) an application to register in any of the member countries listed below, with a right of priority if the United States application is filed within 6 months of the date of the first filing of the foreign application. The WTO Agreement entered into force in the United States on January 1, 1996. The benefits accorded to nationals under this agreement by the United States date from January 1, 1996. The following is a list of WTO members who are not currently members of the Paris Convention. WTO members who are also members of the Paris Convention are not set forth in the list below because nationals from these countries have been able to base their U.S. registration on their home country application or registration since the date of the country’s accession to the Paris Convention. For updates to the list of members below, see WTO’s home page at http://www.wto.org.
Memorandum of Understanding Between United States and Taiwan
On the basis of a Memorandum of Understanding signed on April 10, 1996, between the American Institute in Taiwan and the Taipei Economic and Cultural Representative Office in the United States, a foreign applicant may seek U.S. registration based on either (a) a valid registration, or (b) an application filed in Taiwan, and may claim a right of priority if the United States application is filed within 6 months of the date of the first filing of the application in Taiwan. See notice at 1186 TMOG 50 (May 7, 1996). A registration in Taiwan is valid for 10 years from the date of registration, and may be renewed for 10 years.
Other Countries Offering Reciprocal Registration Rights to United States Applicants
Applicants from countries that are not members of international trademark agreements to which the United States is also a party may register in the United States based upon their home country registration if their home country provides reciprocal registration rights to U.S. applicants. Following is a partial list of such countries. A claim of priority based on a foreign-filed application (15 U.S.C. §1126(d) ) is not usually available to these applicants.
If the country is not on the following list, the examining attorney should require an English copy of the foreign trademark statute providing for reciprocal registration rights to U.S. applicants based on a U.S. registration.
Additional Resources For Information About International Treaties and the Trademark Laws of Foreign Countries
For further information about the trademark laws of foreign countries, see Trademarks Throughout the World (Anne-Laure Covin, 5th ed. 2008) and World Trademark Law and Practice (Ethan Horwitz, 2nd ed. 2008).
The United States Department of State puts out a list of members of treaties currently in force, available at http://www.state.gov/s/l/treaty/tif/index.htm.
Information about the United Nations treaty collection is available at http://treaties.un.org/.
There is a directory of intellectual property offices on the World Intellectual Property Organization’s website at http://www.wipo.int/directory/en/urls.jsp.
There are links to websites of foreign countries at http://www.uspto.gov/faq/other.jsp.