1002.02 Eligible Applicants Under §44(d)
To be eligible for a priority filing date under §44(d), an applicant must meet the following requirements:
- (1) The applicant’s country of origin 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; and
- (2) The foreign application that is the basis for the priority claim must be filed in a country that either is a party to a treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights to priority to United States nationals.
15 U.S.C. §§1126(b), (d).
See TMEP §1002.04 regarding the applicant’s country of origin, and TMEP §1002.03 and Appendix B for information about how to determine whether a particular country is a party to an international treaty or agreement that provides a right of priority to U.S. nationals.
If an applicant does not meet the requirements listed above, 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 an acceptable basis before the application can be approved for publication or registration on the Supplemental Register. See TMEP §1003.03 regarding registration basis for §44 applications and TMEP §806.03 regarding amendment of the basis. The examining attorney must ensure that the priority claim is deleted from the Trademark database and conduct a new search of the records of the United States Patent and Trademark Office ("USPTO") for conflicting marks.
To obtain a priority filing date under §44(d), the foreign application does not have to be filed in the applicant’s country of origin. However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which the applicant relies for priority, the applicant must establish that the country in which the application was filed is its country of origin. TMEP §1002.01. Therefore, if the applicant files a §44(d) priority claim based on an application from a treaty country other than the country in which the applicant is domiciled, the examining attorney must advise the applicant that in order to rely on the registration issuing from the identified foreign application as its basis for registration, the applicant will be required to establish that the country where the foreign application was filed is its country of origin.
It is important to keep in mind that while §44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. A party who files under §44(d) must establish a basis for registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03. For example, a French corporation may rely on a first-filed application in Canada for its priority claim under §44(d), regardless of whether Canada is the applicant’s country of origin. However, before the mark can be published for opposition in the United States, the French corporation must do one of the following: (1) establish Canada as its country of origin and rely on the prospective Canadian registration as its basis for registration in the United States ( see TMEP §§1002.01, 1002.04); (2) assert use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as its basis for publication in the United States; or (3) rely on a registration from France as its basis for registration in the United States.
An applicant domiciled or organized in the United States may claim priority under §44(d) based on ownership of an application in a treaty country other than the United States. See TMEP §1002.05.
See TMEP §§1003 et seq. for additional information about the requirements for obtaining a priority filing date under §44.