1003.01 The “First-Filed” Requirement
The application relied upon under §44(d) must be the applicant’s first application filed in any treaty country for the same mark and for the same goods or services. 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 (e.g., in the application itself or submitted via a Letter of Protest that has been accepted; see TMEP §1715.01 regarding appropriate subjects to be raised in a letter of protest). If the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, the §44(d) priority claim may be based upon a subsequently filed application in the same foreign country or common office of several states. Generally, a written explanation by the applicant or the applicant’s attorney that the first-filed application was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding, and did not serve as a basis for claiming a right of priority, will be sufficient.
The requirement for the same goods or services means that the identification may not exceed the scope of the identification in the foreign application and must be different from the identification covered by any previous application or registration for the mark in a treaty country. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b). Thus, for example, if evidence in the record indicates that an applicant who owns a French registration for “coats, hats, and ties” subsequently files an application with the Office for Harmonization in the Internal Market (“OHIM”) for “coats, hats, ties, and shoes,” and then files a U.S. application within six months seeking a priority filing date for “coats, hats, ties, and shoes” based on the OHIM application, the §44(d) priority claim would be valid only as to “shoes” because the OHIM application was not the first filed in a treaty country for “coats, hats, and ties.” Note, however, that if the foreign application that formed the basis for the French registration is still within the six-month priority period, because, for example, the French registration was issued on the filing date of the foreign application, that foreign application can serve as a basis for priority for the “coats, hats, and ties.”
If the examining attorney determines that the application relied on was not the first filed in any treaty country as to some or all of the goods/services, the examining attorney must advise the applicant that it is not entitled to priority as to the relevant goods/services. If the applicant has not claimed another filing basis, the examining attorney must require the applicant to claim and perfect a basis for any goods/services not entitled to priority 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 regarding amendment of the basis.
If the applicant is not entitled to priority as to any goods/services, the examining attorney must ensure that the priority claim is deleted from the Trademark database. If the applicant is entitled to priority as to some, but not all, of the goods/services, the examining attorney must ensure that the identification in the Trademark database indicates those goods/services that have priority. See TMEP §806.02(a). The examining attorney must also conduct a new search of USPTO records for conflicting marks as to any goods/services not entitled to priority.