206.02 Application Claiming Priority under §44(d) or §67
When an applicant is entitled to priority based on a foreign application, the effective filing date is the date on which the foreign application was first filed in the foreign country. 15 U.S.C. §§1126(d)(1), 1141g; 37 C.F.R. §§2.34(a)(4)(i), 7.27(c); TMEP §§1003.02, 1904.01(e).
In an application under §44(d) of the Trademark Act, the priority claim for the U.S. application must be filed within six months after the filing date of the foreign application. The applicant may submit a priority claim after the filing date of the U.S. application if: (1) the applicant submits the priority claim within the six-month priority period (37 C.F.R. §2.35(b)(5) ); and (2) the applicant was entitled to priority on the filing date of the U.S. application.
In an application under §66(a) of the Act, the priority claim must be submitted with the international application or subsequent designation filed with the IB within six months after the filing date of the foreign application. The priority claim will be part of the request for extension of protection sent to the USPTO by the IB. In some situations, however, the USPTO may receive a priority claim or a corrected priority claim after receipt of the §66(a) application via a notice of correction from the IB.
If the priority date is included in the original §44(d) or §66(a) application, the examining attorney must determine, while conducting a search of USPTO records for conflicting marks, whether there are any applications for conflicting marks that would be deemed later filed. The examining attorney must also notify the examining attorney assigned to any later-filed application so that the application may be suspended pending disposition of the §44(d) or §66(a) application with the earlier effective filing date.
If the priority claim in a §44(d) or §66(a) application is submitted after the examining attorney has conducted a search of USPTO records for conflicting marks, the examining attorney must conduct a new search to determine whether, in view of the new earlier effective filing date, there are any applications for conflicting marks that would now be deemed later filed. The examining attorney must also notify the examining attorney assigned to any now later-filed application so that the application may be suspended pending disposition of the application with the earlier effective filing date.
See TMEP §1003.05 regarding the procedures when an application filed after a §44(d) application’s priority date proceeds to publication or registration because the §44(d) application was not yet filed with the USPTO when the examining attorney searched for conflicting marks. See TMEP §1904.01(e) regarding the procedures when an application filed after a §66(a) application’s priority date proceeds to publication or registration because the request for extension of protection for the §66(a) application was not yet of record with the USPTO when the examining attorney searched for conflicting marks.