1003.01 The "First-Filed" Requirement
The application relied upon under §44(d) must be the applicant’s first application in a treaty country for the same mark and for the same goods or services. If the foreign country denominates an application in the foreign country as "An Application to Extend the Wares" or in some similar fashion, but the application is, in substance, the equivalent of a new application in the United States, the foreign application will be considered the first-filed for the purpose of meeting the requirements of §44(d) in the United States. However, the goods or services must be different from those covered by any previous application for the mark in a treaty country.
The §44(d) priority claim may be based upon a subsequently filed application in the same foreign country or common office of several states, if the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority.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 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.
If the examining attorney determines that the application relied on was not the first filed, the examining attorney must advise the applicant that it is not entitled to priority. If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect a 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 TMEP §§806.03 et seq. regarding amendment of the basis. The examining attorney should ensure that the priority claim is deleted from the TRAM database, and should conduct a new search of USPTO records for conflicting marks.