U.S. Trademark Rights Are Sometimes Based on First to File: Racing Against Foreign Registrations Under Section 44(d)

A friend wanted to file a U.S. trademark application, but knew about a similar trademark that is used exclusively outside the U.S.  Should she rush to file an application here, or would she be preempted by a foreign trademark registration?

The answer, of course, is maybe.   Section 44(d) of the Lanham Act, also known as 15 U.S.C. Section 1126(d), provides, among other things, the following: 

Right of priority. An application for registration of a mark … shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, that—

   (1) the application in the United States is filed within six months from the date on which the application was first filed in the foreign country.   

This means that if a would-be competitor from a foreign country has not applied for registration in the U.S. within 6 months from when they filed the application in the foreign country, they would not be able to trump an intent-to-use application that you file in the U.S. P.T.O., provided that you file first.

The moral of the story:  do some background research on the foreign mark’s registration status in its native country.  If the registration is more than six months old, run (do not walk) to the United States Patent and Trademark Office (USPTO) and file an intent-to-use (or an actual use) application.

Alternatively, foreign registrants should also be aware of this provision to use it to their advantage.  A foreign registrant with a bona fide intent to use its trademark in the United States should apply for registration in the USPTO within six months of applying to the foreign country’s trademark office – or you may be shut out from registering the mark in the U.S. by a U.S. applicant who files first.

Kaufman & Kahn is available for further questions and assistance as to your particular circumstances.  This website is intended to be a source of information, but not of legal advice. Therefore, please do not consider this information, or any email correspondence, to be an invitation for an attorney-client relationship, or rely on the information provided herein as legal advice for any purpose.