TMEP 1303.01(a)(iii): Foreign Priority – §44(d)
October 2017 Edition of the TMEP
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1303.01(a)(iii) Foreign Priority – §44(d)
Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act. 37 C.F.R. §2.44(a)(4)(iv)(A); TMEP §1003.03. If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered. See TMEP §1303.01(a)(ii) regarding the requirements for a §1(b) basis.
Under 15 U.S.C. §§1054, 1126(d), and 37 C.F.R. §2.44(a)(4)(iv), the requirements for receipt of a priority filing date based on a previously filed foreign application are:
- (1) The applicant must file a claim of priority within six months of the filing date of the foreign application (37 C.F.R. §2.44(a)(4)(iv)(A) );
- (2) The applicant must: (a) specify the filing date, serial number, 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a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a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 (37 C.F.R. §2.44(a)(4)(iv)(A); see also Paris Convention Article 4(D)); and
- (3) The applicant must submit a verified statement that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; that to the best of the signatory’s knowledge and belief, no other persons, except members, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods or services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true (37 C.F.R. §2.44(a)(4)(iv)(B); see 15 U.S.C. §§1051(b)(3)(B), 1054). This allegation is required even if use in commerce is asserted in the application ( TMEP §806.02(e)). See TMEP § 1303.01(b)(i) for additional information regarding the requirements for the verified statement in applications under §44 of the Trademark Act.
The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign application or registration. 37 C.F.R. §2.44(a)(2)(iii); TMEP §1402.01(b).
If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis. 37 C.F.R. §2.35(b)(3), (b)(4). See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis and TMEP §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis. See TMEP §§1003–1003.08 for further information about §44(d) applications.