Eligible Applicants Under §44(d)

To be eligible for a priority filing date under §44(d), an

applicant must meet the following requirements:

(1) The applicant’s country of origin 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; and

(2) The foreign application that is the basis for the priority

claim must be filed in a country that either is a party to a treaty or agreement with

the United States that provides a right of priority, or extends reciprocal rights to

priority to U.S. nationals.

15 U.S.C.

§1126(b)

,

(d)

.

See

TMEP

§1002.04

regarding the applicant’s country of origin, and

§1002.03

and

Appendix B

for information about how to determine whether a particular

country is a party to an international treaty or agreement that provides a right of priority

to U.S. nationals.

If an applicant does not meet the requirements listed above,

the examining attorney must advise the applicant that it is not entitled to priority. If the

applicant has not claimed another filing basis, the examining attorney must require the

applicant to claim and perfect an acceptable basis before the application can be approved

for publication or registration on the Supplemental Register. See

TMEP §1003.03

regarding registration basis

for §44 applications and

§806.03

regarding amendment of the basis. The examining attorney

must ensure that the priority claim is deleted from the Trademark database and conduct a new

search of the records of the United States Patent and Trademark Office (USPTO) for

conflicting marks.

To obtain a priority filing date under §44(d), the foreign

application does

not

have to be filed in the applicant’s country of

origin.  However, to obtain registration under §44(e) based on the foreign registration that

will issue from the application on which the applicant relies for priority, the applicant

must establish that the country in which the application was filed is its country of origin.

TMEP

§1002.01

ity filing date under §44(d), the foreign

application does

not

have to be filed in the applicant’s country of

origin.  However, to obtain registration under §44(e) based on the foreign registration that

will issue from the application on which the applicant relies for priority, the applicant

must establish that the country in which the application was filed is its country of origin.

TMEP

§1002.01

. Therefore, if the applicant files a §44(d) priority claim

based on an application from a treaty country other than the country in which the applicant

is domiciled, the examining attorney must advise the applicant that in order to rely on the

registration issuing from the identified foreign application as its basis for registration,

the applicant will be required to establish that the country where the foreign application

was filed is its country of origin.

It is important to keep in mind that while §44(d) provides a

basis for filing and a priority filing date, it does not provide a basis for publication or

registration. A party who files under §44(d) must establish a basis for

registration.

37 C.F.R. §2.34(a)(4)(iii)

;

TMEP §1003.03

. For example, a French

corporation may rely on a first-filed application in Canada for its priority claim under

§44(d), regardless of whether Canada is the applicant’s country of origin. However, before

the mark can be published for opposition in the United States, the French corporation must

do one of the following: (1) establish Canada as its country of origin and rely on the

prospective Canadian registration as its basis for registration in the United States

(

see

TMEP §§1002.01

,

1002.04

); (2) assert

use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as

its basis for publication in the United States; or (3) rely on a registration from France as

its basis for registration in the United States

its country of origin and rely on the

prospective Canadian registration as its basis for registration in the United States

(

see

TMEP §§1002.01

,

1002.04

); (2) assert

use in commerce under §1(a) and/or a bona fide intention to use in commerce under §1(b) as

its basis for publication in the United States; or (3) rely on a registration from France as

its basis for registration in the United States.

An applicant domiciled or organized in the United States may

claim priority under §44(d) based on ownership of an application

in a treaty

country other than the United States

.

See

TMEP §1002.05

.

See

TMEP

§§1003

-

1003.08

for additional

information about the requirements for obtaining a priority filing date under §44.