T.M.E.P. § 1003
Section 44(d) - Priority Filing Date Based on a Foreign Application

Executive summary:

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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), grants a priority filing date to qualified applicants (see TMEP §1002.02) who have filed an application in a treaty country as defined by §44(b) (see TMEP §1002.03). If a qualified applicant files the United States application claiming §44(d) priority within six months of filing the first application to register the mark in a treaty country, the United States application will receive an effective filing date as of the filing date of the foreign application.

The requirements for receipt of a priority filing date under §44(d) are:

(1) The 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) and 2.35(b)(5); TMEP §§1003.01 and 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a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a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)(A) and (B).

(3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. 15 U.S.C. 1126(d)(2). If the verified statement is not filed with the initial application, the verified statement must allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application. 37 C.F.R. 2.34(a)(4)(ii).

(4) Both the 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 United States nationals. 15 U.S.C. 1126(b) and (d); TMEP §§1002.02 , 1002.03 and 1002.04.

(5) The scope of the goods covered by the §44(d) basis cannot exceed the scope of the goods or services 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).

If the applicant is not domiciled in the United States, the applicant may designate a domestic representative, i.e., a person residing in the United States on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. 1051(e); TMEP §604. This can be done through the Trademark Electronic Application System ("TEAS"), at www.uspto.gov/teas/index.html.

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).

Section 44(d) of the 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 Office and the priority date will appear in the TRAM database.