What is a foreign registration filing basis?
It is possible to file a US trademark application based on a foreign registration for the same mark. You can file a trademark application with the USPTO based on a foreign trademark trademark under Section 44(e) if the trademark and certain details are all the same.
Need to file a US trademark application based on a foreign application or registration? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can register your foreign trademark in the US.
What are the requirements for basing a US trademark application on a foreign registration?
Before filing a US trademark application based on a foreign registration, make sure that all requirements will be met. Most importantly, the applied-for mark in the US must be exactly the same as that of the foreign registration. Furthermore, the US applicant must be the owner of the foreign registration.
Per TMEP Section 1004, the requirements for a Section 44(e) application include:
(1) The applicant must be the owner of a valid registration in the applicant’s country of origin. 15 U.S.C. §1126(c), (e). See TMEP §1002.01 and §1002.04 regarding country of origin.
(2) The applicant’s country of origin must be a party to a treaty or agreement with the United States that provides for registration based on ownership of a foreign registration, or must extend reciprocal registration rights to nationals of the United States. 15 U.S.C. §1126(b); see TMEP §§1002.03, 1002.04, 1002.05.
(3) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01.
(4) 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(e); 37 C.F.R. §2.34(a)(3)(i). 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)(3)(i).
(5) The scope of the identification covered by the §44(e) basis may not exceed the scope of the identification in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
Will a Statement of Use still be required?
In an Intent-To-Use trademark application that also includes a foreign registration filing basis under Section 44(e), the applicant may bypass the Statement of Use by deleting the Section 1(b) filing basis and relying solely on the foreign registration. In other words, you do not need to show use of a mark in US commerce before obtaining a US trademark registration based on a foreign registration.
However, the trademark owner must commence use in the US promptly after registration. Keep in mind that an expungement request based on nonuse may be filed by third parties after 3 years from the registration date.
Is a Section 44 US registration independent of the underlying foreign registration?
Yes, a US trademark registration based on Section 44 will exist independent of the underlying foreign registration [see TMEP 1015].
Can a Section 44(e) registration basis be added after initial filing?
Yes, an applicant can add a Section 44(e) foreign registration basis after the initial filing and before publication [see TMEP 806.03(g)]. When adding a Section 44(e) basis, the applicant must submit a copy of the foreign registration with the amendment, and an English translation if the foreign registration is in a non-English language.
In contrast, an applicant can add or substitute a Section 44(d) filing basis only within six months of the filing date of the foreign application.
