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

This is the October 2015 Edition of the TMEP

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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), 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 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a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a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).
  • (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-United States 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, TMEP §1304.02(a)(iii) for collective membership mark applications, and TMEP §1306.02(a)(iii) for certification mark applications.

If the applicant is not domiciled in the United States, the applicant may designate a domestic representative, that is, 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 §610. This can be done through the Trademark Electronic Application System (“TEAS”), at http://www.uspto.gov.

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.