1003    Section 44(d) - Priority Filing Date Based on a Foreign Application

Section 44(d) of the Trademark Act, 15 U.S.C. §1126(d), provides for a priority filing date to eligible applicants ( see TMEP §1002.02) who have filed an application in a treaty country as defined by §44(b) (see TMEP §1002.03).  If an eligible applicant files the U.S. application claiming §44(d) priority within six months of filing the first application to register the mark in a treaty country, the filing date of the first-filed foreign application is the effective filing date of the U.S. application.

The requirements for receipt of a priority filing date under §44(d) for a trademark or service mark application are:

  • (1) The eligible applicant must file a claim of priority within six months of the filing date of the first-filed foreign application.  15 U.S.C. §1126(d)(1); 37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5); TMEP §§1003.01, 1003.02.
  • (2) The applicant must:  (a) specify the filing date and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.  15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4)(i).
  • (3) The applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce.  15 U.S.C. §1126(d)(2); 37 C.F.R. §2.34(a)(4)(ii).  If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.  37 C.F.R. §2.34(a)(4)(ii).
  • (4) Both the non-U.S. applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority, or must extend reciprocal rights to priority to U.S. nationals.  15 U.S.C. §1126(b), (d); TMEP §§1002.02, 1002.03, 1002.04.
  • (5) The scope of the identification covered by the §44 basis may not exceed the scope of the identification in the foreign application.  37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
  • (6) The applicant must specify the serial number of the foreign application.  37 C.F.R. §2.34(a)(4)(i)(A); Paris Convention Article 4(D)(5).

For requirements for the receipt of a priority filing date under §44(d) for collective and certification marks, see TMEP §1303.01(a)(iii) for collective trademark or collective service mark applications, §1304.02(a)(iii) for collective membership mark applications, and §1306.02(a)(iii) for certification mark applications.

The priority filing date also constitutes a constructive date of first use in the United States under 15 U.S.C. §1057(c)  (see TMEP §201.02), if the application matures into a registration.   See SCM Corp. v. Langis Foods Ltd., 539 F.2d 196, 190 USPQ 288 (D.C. Cir. 1976). Therefore, the priority date cannot be later than the filing date of the U.S. application.

Section 44(d) of the Trademark Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration.   See TMEP §1003.03.

In a §44(d) application, both the actual date the application was received in the USPTO and the priority date will appear in the Trademark database.

1003.01    The "First-Filed" Requirement

The application relied upon under §44(d) must be the applicant’s first application filed in any treaty country for the same mark and for the same goods or services.  The USPTO will presume that the application identified as the basis for the priority claim was the first filed, unless there is contradictory evidence in the record (e.g., in the application itself or submitted via a Letter of Protest that has been accepted; see TMEP §1715.01 regarding appropriate subjects to be raised in a letter of protest). If the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, the §44(d) priority claim may be based upon a subsequently filed application in the same foreign country or common office of several states. Generally, a written explanation by the applicant or the applicant’s attorney that the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, will be sufficient.

The requirement for the same goods or services means that the identification may not exceed the scope of the identification in the foreign application and must be different from the identification covered by any previous application or registration for the mark in a treaty country. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b). Thus, for example, if evidence in the record indicates that an applicant who owns a French registration for "coats, hats, and ties" subsequently files an EU trademark application with the European Union Intellectual Property Office for "coats, hats, ties, and shoes," and then files a U.S. application within six months seeking a priority filing date for "coats, hats, ties, and shoes" based on the EU trademark application, the §44(d) priority claim would be valid only as to "shoes" because the EU trademark application was not the first filed in a treaty country for "coats, hats, and ties." Note, however, that if the foreign application that formed the basis for the French registration was itself filed within six months of the filing date of the U.S. application, the French application may serve as a basis for priority for the "coats, hats, and ties" in the U.S. A single U.S. application may claim priority for different goods and services on the basis of different foreign applications for the same mark as long as all foreign applications claimed were the first-filed for the identified goods/services and were filed no earlier than six months prior to the U.S. application filing date.

If the examining attorney determines that the application relied on was not the first filed in any treaty country as to some or all of the goods/services, the examining attorney must advise the applicant that it is not entitled to priority as to the relevant goods/services.  If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect a basis for any goods/services not entitled to priority before the application can be approved for publication or for registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and §806.03 regarding amendment of the basis.  

If the applicant is not entitled to priority as to any goods/services, the examining attorney must ensure that the priority claim is deleted from the Trademark database. If the applicant is entitled to priority as to some, but not all, of the goods/services, the examining attorney must ensure that the identification in the Trademark database indicates those goods/services that have priority. See TMEP §806.02(a). The examining attorney must also conduct a new search of USPTO records for conflicting marks as to any goods/services not entitled to priority.  

1003.02    Priority Claim Must Be Filed Within Six Months of Foreign Filing

An applicant must file a claim of priority within six months after the filing date of the foreign application.  15 U.S.C. §1126(d)(1); 37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5); Paris Convention Article 4(C)(3).  The applicant can submit the priority claim after the filing date of the U.S. application, as long as the claim of priority is submitted within six months of the foreign filing and the claimed priority date is earlier than the filing date of the U.S. application.

Example:  If an eligible applicant files in France on December 6, 2011, and in the United States on January 12, 2012, the applicant can add a priority claim to the United States application on or before June 6, 2012, if the applicant meets the requirements of §44(d).  The applicant cannot add a priority claim to the U.S. application after June 6, 2012.

If an applicant claims priority under §44(d), but does not specify the filing date of the foreign application, the examining attorney must require that the applicant specify the date of the foreign filing.

If the applicant submits a claim of priority more than six months after the date of the foreign filing, the examining attorney must advise the applicant that it is not entitled to priority.   See 15 U.S.C. §1126(d); 37 C.F.R. §§2.34(a)(4)(i), 2.35(b)(5).  If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect an acceptable basis before the application can be approved for publication or for registration on the Supplemental Register.  See TMEP §1003.03 regarding registration basis for §44 applications and §806.03 regarding amendment of the basis.  The examining attorney should ensure that the priority claim is deleted from the Trademark database, and should conduct a new search of USPTO records for conflicting marks.  

If the priority period ends on a Saturday, Sunday, or Federal holiday within the District of Columbia, the priority claim may be filed no later than the following day that is not a Saturday, Sunday, or a Federal holiday within the District of Columbia.  Paris Convention Article 4(C)(3); 35 U.S.C. §21(b); 37 C.F.R. §2.196.

1003.03    Basis for Registration Required

Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration.  Before an application may be approved for publication, or allowed for registration on the Supplemental Register, the applicant must establish a basis for registration under §1(a), §1(b), or §44(e) of the Act.   See 37 C.F.R. §2.34(a)(4)(iii).  See TMEP §1002.02 regarding applications that are entitled to a priority filing date under §44(d), but are not entitled to registration under §44(e) because the foreign application was filed in a treaty country that is not the applicant’s country of origin.

An applicant may claim more than one basis for registration (i.e., §44(e) in addition to §1(a) or §1(b)). If the applicant claims a §1(b) basis, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c)  or a statement of use under 15 U.S.C. §1051(d) ) before the mark can be registered.  See TMEP §806.01(b) regarding the requirements for a §1(b) basis and §§1004-1004.02 regarding the requirements for registration under §44(e).

A §44(d) applicant may not assert a basis under §66(a) of the Trademark Act, based on an extension of protection of an international registration to the United States.   See 37 C.F.R. §§2.34(b), 2.35(a).

1003.04    Suspension Awaiting a Foreign Registration

1003.04(a)    Applications Based Solely on Section 44

In a §44(d) application filed via TEAS, the applicant is asked to specifically indicate that it does not intend to rely on §44(e) as a basis for registration, but wishes only to assert a valid claim of priority. If the applicant does not do so, an intent to rely on §44(e) is presumed and, when filed, the application will include a statement that the applicant intends to rely on §44(e) as a basis for registration.

If, on initial examination of the application, there are no refusals, requirements, or prior pending applications, the examining attorney will suspend action on the application pending receipt of the foreign registration.  The suspension notice must include a search clause (see TMEP §704.02).

If, on initial examination, the examining attorney issues any refusals or other requirements, the Office action must also include a requirement that the applicant submit the foreign registration when it becomes available. Depending upon the applicant’s response, the examining attorney will take appropriate action to place the application in condition for approval for publication, allowance for registration on the Supplemental Register, or final action on all other issues, and will then suspend further action pending receipt of the foreign registration. In the notice of suspension, the examining attorney must reference any continued refusals or requirements. See TMEP §716.01.

If, on initial examination, the only other issue is a prior pending application, the examining attorney will suspend action on the application pending receipt of the foreign registration and resolution of the prior pending application. The suspension notice must include a search clause (see TMEP §704.02). If the foreign registration is submitted while the prior pending application is pending, the application will be re-suspended and the suspension letter will state that the foreign registration has been received but will not be examined until the prior pending application either abandons or registers. If the prior pending application abandons before the applicant submits the foreign registration, the examining attorney will re-suspend the application pending receipt of the foreign registration. The suspension letter must state that the prior pending application has abandoned and no longer poses a potential bar to registration. However, if the prior pending application registers before the foreign registration is submitted, the examining attorney will issue a non-final Office action with a §2(d) refusal and a requirement that the applicant submit the foreign registration when it becomes available. If the applicant responds, but the foreign registration cannot yet be provided, the application will be re-suspended. The suspension notice must indicate whether the §2(d) refusal is continued or withdrawn. See TMEP §716.01.

If the TEAS application indicates that the applicant is not relying on §44(e) and no other basis for registration is claimed, the examining attorney must inquire since the application lacks a basis for registration. If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, this inquiry may be made via telephone or email. The following actions should be taken based on the applicant’s response to the inquiry:

  • If the applicant responds that it intends to rely on §44(e) as the basis, the examining attorney must enter a Note to the File in the record and suspend the application pending receipt of the foreign registration. The suspension letter must include a search clause. See TMEP §§704.02, 1003.04(a).
  • If the applicant responds that it intends to rely solely on §1(b) as the basis, the examining attorney must issue an examiner’s amendment so specifying.
  • If the applicant responds that it intends to rely solely on §1(a) and the application does not include a specimen, dates of use, and/or the proper declaration, the examining attorney must issue a priority action specifying what actions the applicant must take. See TMEP §708.01.

If, however, there are other refusals or requirements, or the applicant cannot be reached by telephone or email, the examining attorney must issue an Office action that includes the inquiry regarding whether the applicant intends to rely on §44(e) as a registration basis and note that, if so, the foreign registration is required when it becomes available.

Permitted paper filing. If a permitted paper §44(d) application (see TMEP §301.01) is silent as to whether the applicant intends to rely on §44(e), the USPTO will presume that the applicant intends to rely on §44(e) as a basis for registration and follow the same procedures as for TEAS applications.

1003.04(b)    Multiple-Basis Applications

If an applicant properly claims §44(d) as a basis for receipt of a priority filing date and asserts §1 as a second basis, the applicant may elect not to perfect the §44 basis and still retain the priority filing date.  37 C.F.R. §2.35(b)(3)-(4).   If the TEAS application indicates that the applicant is relying on §44(e) as a basis for registration, the examining attorney must follow the procedures in TMEP §1003.04(a) with respect to the §44(e) basis. If the application indicates that the applicant is not relying on §44(e) as an additional basis for registration and is only asserting §44(d) to receive a priority filing date, the examining attorney must ensure that the Trademark database is updated accordingly. See TMEP §806.02(f) and 806.03(j) regarding the addition or substitution of a §44(e) basis after a mark has been published for opposition.

Permitted paper filing. When a permitted paper application (see TMEP §301.01) is silent as to whether the applicant intends to rely on §44(e) as an additional basis for registration, the examining attorney must inquire as to whether the applicant intends to rely on the §44(e) basis. If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, this inquiry may be made via telephone or email.  If the applicant intends to perfect the §44 basis, the examining attorney must enter a Note to the File in the record and suspend the application pending receipt of the foreign registration.  If the applicant does not wish to perfect the §44 basis, the examining attorney must issue an examiner’s amendment to this effect.  If the applicant cannot be reached by telephone or email, the examining attorney must enter a Note to the File in the record indicating the unsuccessful attempt to contact the applicant and suspend action on the application pending receipt of the foreign registration. The suspension notice must include a search clause (see TMEP §704.02).

If it is necessary to issue an Office action for a paper application that does not specify whether applicant intends to rely on §44(e) as an additional basis, the examining attorney must inquire as to whether the applicant intends to perfect §44 as a second basis for registration and note that, if so, the foreign registration is required when it becomes available. If the response indicates that the applicant is not relying on §44(e) as an additional basis for registration, the examining attorney will approve the application for publication or allowance on the Supplemental Register, or will issue a final action, as appropriate. If the response indicates that the applicant intends to rely on §44(e) as a second basis, or fails to indicate whether the applicant intends to perfect the §44 basis, the examining attorney will suspend further action pending submission of the foreign registration and, if appropriate, resolution of the prior pending application. In the notice of suspension, the examining attorney must reference any refusals or requirements that are continued. See TMEP §716.01.  

See TMEP §1003.04(a) with respect to suspension procedures when there is a prior pending application.

1003.04(c)      Periodic Inquiries Issued as to Status of Foreign Application

Examining attorneys must issue inquiries as to the status of the foreign application in applications that have been suspended for more than six months. See TMEP §716.05.  If the applicant does not respond or request an extension of time to respond to this inquiry within three months of the issuance date, the application will be abandoned for failure to respond to an Office action. See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a); TMEP §718.02. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.

If the foreign application has not yet matured to registration, the applicant should submit a statement to that effect. This statement may be submitted using the TEAS Response to Suspension Inquiry or Letter of Suspension form in a formal response to the suspension inquiry or by timely notifying the examining attorney in an informal communication by telephone or email. In such case, the examining attorney will issue a new notice of suspension. If the statement is provided through informal communications, the examining attorney must also enter a Note to the File in the record that indicates the applicant’s response. See TMEP §709.05.

If the applicant states that the foreign registration has issued, but does not provide a copy of the certificate, the examining attorney must issue an Office action requiring a copy, unless the applicant has established that it cannot obtain a copy of the foreign registration due to extraordinary circumstances (e.g., war or natural disaster). See 15 U.S.C. §1126(e);  37 C.F.R. §2.34(a)(3)(ii); TMEP § §716.02(b), 1004.01.

1003.05    Section 44(d) and Priority for Publication

To determine priority for publication under 37 C.F.R. §2.83, an application filed in the United States under §44(d) will be treated as if it were filed in the United States on the same date as the filing in the foreign country.  The §44(d) application will receive priority over any application filed after the §44(d) applicant’s priority filing date that might otherwise be a possible bar to registration under §2(d) of the Trademark Act due to a likelihood of confusion.  See TMEP §§1208-1208.03(c) regarding conflicting marks in pending applications.

In some cases, another U.S. application filed after the §44(d) applicant’s priority date may proceed to publication or registration because the §44(d) applicant had not yet filed in the United States when the examining attorney searched USPTO records for conflicting marks.  If the USPTO learns that a §44(d) application is entitled to priority over another pending application before the other mark registers, the USPTO will take appropriate action to give the §44(d) application the priority to which it is entitled. The §44(d) applicant may bring the priority-date issue to the USPTO’s attention by submitting a letter of protest in the other pending application. See TMEP §1715 regarding letters of protest.

If an examining attorney discovers a conflicting application entitled to priority under §44(d) after taking action in a case, the examining attorney must issue a supplemental action correcting the situation.  If the mark has been published, the examining attorney must request jurisdiction before issuing the action, unless a notice of allowance has issued.  See TMEP §1504.01 and §1504.04(a) regarding the examining attorney’s jurisdiction.

However, if the conflicting mark has already registered, the USPTO does not act to cancel the registration sua sponte.  The §44(d) applicant may seek to cancel the registration by filing a petition for cancellation with the Trademark Trial and Appeal Board.

1003.06    Applicants May File Under both §44(d) and §44(e)

In some cases, a §44 applicant may have already received, before filing in the USPTO, a foreign registration as a result of the same foreign application upon which the applicant relies for priority under §44(d).  This may occur in countries that do not examine applications prior to registration.  In this situation, the applicant may file under both §44(d) and §44(e).

An applicant may also claim priority under §44(d) based upon a foreign application, and proceed to registration under §44(e) based upon a different foreign registration.  Both foreign countries must be parties to a treaty or agreement with the United States and the foreign registration must be from a country of origin of the applicant.  If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis, but may require republication.   See TMEP §1004.02.

1003.07    Application May Be Based on More than One Foreign Application

An applicant may file an application in the United States based on more than one foreign application for different goods or services, or for different classes, if the applicant meets the requirements of §44(d) with respect to each foreign application on which the U.S. application is based.  The applicant must specify which goods or services, or which classes, are covered by which foreign application.  The mark in each foreign application must be the same mark for which registration is sought in the U.S. application.

1003.08    Abandonment of the Foreign Application

If the foreign application relied on under §44(d) is abandoned during the prosecution of the U.S. application, the applicant may amend the application to rely on another basis.   See TMEP §806.03.  If the applicant met the requirements of §44(d) on the filing date of the U.S. application, the applicant will retain the priority filing date even if the foreign application is abandoned.   See37 C.F.R. §2.35(b)(4).

In this situation, the USPTO will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date, unless there is contradictory evidence in the record.   See 37 C.F.R. §2.35(b)(3); TMEP §806.03(h).