Trademark applications in the US can be based on use, an intent-to-use, or a foreign trademark application.
When a trademark application has been previously filed outside the US, for certain entities there are ways to enter the US based on that foreign trademark application. Applications can be filed under what is called 44(d) and 44(e) bases. There are a lot of wrinkles to prosecution under both bases, and you should consult an attorney before filing an application under either. For example, certain actions must be taken if you, as the owner of the foreign trademark, are not domiciled in the United States. These actions can affect the cost, timeline, and registrability of the trademark application. And particular timelines must be followed if you are or have filed a number of foreign applications before the US one. Despite these and other nuances, the below provides a brief overview of the two different foreign-basis processes.
Section 44(d) Filing Basis
Under Section 44(d), your US trademark application can be filed and granted a priority date because you filed a foreign priority trademark application less than 6 months before. You must claim an intent-to-use the trademark in United States commerce. The scope of the goods and services identified in the US application is confined by the foreign trademark application; it cannot be broader than the priority application.
The Examiner will then begin to review the US application. If there are issues with it, the Examiner will send an office action presenting those issues, and you will have 6 months to respond and overcome those issues. If you do overcome those issues – or they are never raised in the first place – then the Examiner will suspend the application pending an update on the foreign trademark application.
If the foreign trademark application registers and you provide proof of such, then the US application can be converted from a 44(d) basis to a 44(e) basis, discussed below, and the application will be published for potential trademark opposition. If, however, the foreign application is abandoned, your US application may be re-suspended, or you may have the opportunity to rely on some other filing basis without forfeiting the priority date. For example, if you have begun to sell the product in the US, you can change the intent-to-use basis of the US application to an actual in-use basis.
It is important to remember that Section 44(d) only provides a basis for receiving a priority filing date – an effective filing date which is earlier than the day the application was actually filed in the US – because of the foreign trademark application. It does not provide a right to publication or registration.
Section 44(e) Filing Basis
If you own a valid foreign trademark registration, you may be able to base a US trademark application on it under Section 44(e).
When you file an application under 44(e), you must claim a bona fide intent to use the mark in US commerce, the scope of the goods or services cannot exceed that of the foreign trademark application, and you have to submit a copy of the foreign trademark registration from the country of your origin.
If the Examiner finds that all filing requirements under Section 44(e) are met, the US trademark application will be approved for publication. If not opposed, it will then proceed toward registration. Section 44(e) thus provides a basis for registering a trademark in the US without actually using it in the US. There are some drawbacks to this, but it is nonetheless an important exception to the conventional requirement that a mark be used in order to be registered.