Establishing Entitlement Under a Treaty or Foreign Law

In a Trademark Act §44 application, the examining attorney

must confirm that: (1) both the applicant’s country of origin and the country where the

applicant has filed the application or obtained registration are (a) parties to a treaty or

agreement with the United States or (b) they extend reciprocal rights to U.S. nationals by

foreign law;

and

(2) the specific benefit that the applicant is claiming

under §44 (i.e., the right to a priority filing date under §44(d) and/or the right to

registration under §44(e)) is provided for under the treaty, agreement, or foreign law.

See

TMEP §§1002.01

,

1002.02

.

To determine whether a particular country has a treaty with

the United States that provides for the benefit that the applicant is claiming under §44,

examining attorneys should consult

Appendix

B

of this manual. Appendix B lists the members of the Paris Convention,

Inter-American Convention, Buenos Aires Convention, World Trade Organization, European Union

(“EU”), and certain countries entitled to reciprocal treatment under other international

agreements or foreign laws, as well as websites where examining attorneys can obtain updated

information about these treaties, agreements, or foreign laws.

Some EU member states maintain special relationships with

overseas countries and territories (OCTs), which include Aruba, Bonaire, Curaçao, Saba,

St-Eustatius, St-Maarten, New Caledonia, French Polynesia, Wallis et Futuna, Saint-Pierre et

Miquelon, and Mayotte. Generally, these OCTs are not parties to a relevant treaty or

agreement with the United States, nor do they extend reciprocal rights to U.S. nationals by

foreign law, as required by §44. Therefore, if the applicant’s country of origin, or the

country that issued the foreign registration, is one of these OCTs, the application is not

entitled to priority under §44(d) or registration under §44(e) unless they fall under one of

the exceptions below.

See

15 U.S.C. §1126(b)

,

(d)

,

e United States, nor do they extend reciprocal rights to U.S. nationals by

foreign law, as required by §44. Therefore, if the applicant’s country of origin, or the

country that issued the foreign registration, is one of these OCTs, the application is not

entitled to priority under §44(d) or registration under §44(e) unless they fall under one of

the exceptions below.

See

15 U.S.C. §1126(b)

,

(d)

,

(e)

;

TMEP §§1002.01

,

1002.02

. For more information about OCTs, see European Commission,

Overseas Countries & Territories

https://international-partnerships.ec.europa.eu/countries/overseas-countries-and-territories_en

(accessed December 19, 2025).

Citizens of British overseas territories and Crown

Dependencies are also citizens of the United Kingdom. See GOV.UK, Types of British

Nationality,

https://www.gov.uk/types-of-british-nationality/british-overseas-territories-citizen

(accessed December 19, 2025). Therefore, individuals claiming citizenship in Anguilla,

Bermuda, British Antarctic Territory, British Indian Ocean Territory, British Virgin

Islands, Cayman Islands, Falkland Islands, Gibraltar, Montserrat, Pitcairn Islands, Saint

Helena, Ascension and Tristan da Cunha, South Georgia and the South Sandwich Islands, Turks

and Caicos Islands, the Bailiwick of Jersey, the Bailiwick of Guernsey, and the Isle of Man

will be considered as having the United Kingdom as one of their countries of origin. This

authority only applies to individual citizens of overseas territories. Accordingly,

individual citizens of the British overseas territories or Crown Dependencies, are eligible

for priority under §44(d) if the relevant foreign application was filed in a country which

is party to an international agreement to which the United States is also a party, or

registration under §44(e) if the foreign registration issued from the United Kingdom.

See

TMEP App. B

eas territories. Accordingly,

individual citizens of the British overseas territories or Crown Dependencies, are eligible

for priority under §44(d) if the relevant foreign application was filed in a country which

is party to an international agreement to which the United States is also a party, or

registration under §44(e) if the foreign registration issued from the United Kingdom.

See

TMEP App. B. In addition, an individual applicant from a United

Kingdom territory may rely on a United Kingdom application or registration if the applicant

has an address in the United Kingdom or in the Isle of Man. Compare

CandyVerse, LLC

v. Zeeth Ltd.

, Opp. No. 91289595, 2025 TTAB LEXIS 459 (2025) which considers a

juristic applicant organized in a British overseas territory and its eligibity for §44(d)

priority.

In a §44 application or an amendment adding or substituting

§44 as a basis, an eligible applicant may rely on an application filed in or registration

issued by certain common offices of several states. A “common office of several states”

refers to an entity serving as the issuing office for trademark registrations for an

established group of countries. Examples include the Benelux Trademark Office, servicing

Belgium, The Netherlands, and Luxembourg; and the African Intellectual Property Organization

(“OAPI”), which issues registrations covering all member states (i.e., Benin, Burkina-Faso,

Cameroon, Central African Republic, Chad, Congo, Equatorial Guinea, Gabon, Guinea,

Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, and Togo).

An applicant may also claim the benefits of §44 based on an

application for or registration of an EU trademark if the applicant has a bona fide and

effective industrial or commercial establishment in a country or state that is a member of

the EU, formerly known as the European Community (EC) or European Economic Community (EEC).

See Appendix B for a list of these countries

ger, Senegal, and Togo).

An applicant may also claim the benefits of §44 based on an

application for or registration of an EU trademark if the applicant has a bona fide and

effective industrial or commercial establishment in a country or state that is a member of

the EU, formerly known as the European Community (EC) or European Economic Community (EEC).

See Appendix B for a list of these countries.

Effective January 1, 2021, a citizen of the United Kingdom

or a juristic entity organized under the laws of a United Kingdom country or overseas

territory may no longer rely on an EU registration to support a §44(e) registration basis

unless it can show that the EU is its country of origin. For more information about

establishing country of origin for a §44(e) registration basis, see

TMEP

§1002.04

.

On January 1, 2021 the IP Office of the United Kingdom

(UKIPO) began automatically issuing a UK trademark registration to replace every active EU

trademark registration. The UK trademark registration will retain the original EU trademark

filing date as well as the original priority and UK seniority dates. The UKIPO will not

issue registration certificates for these trademarks. Instead, it will reflect the new

trademark registrations in its electronic records on its website, GOV.UK. If an applicant

submitted an active EU registration to support its §44(e) registration basis prior to

January 1, 2021, the USPTO will update its electronic records to reflect the UK registration

number. If a §44(e) applicant did not previously supply a copy of its active EU registration

and is relying on an automatically issued UK trademark registration, the applicant must

submit a copy of the trademark registration record found on the UKIPO’s website.

A party who had an EU trademark application that was

pending on January 1, 2021 may apply to register the same trademark with the UKIPO. An

applicant who files by September 30, 2021 will retain the original EU trademark filing date

as well as the original priority and UK seniority dates

egistration, the applicant must

submit a copy of the trademark registration record found on the UKIPO’s website.

A party who had an EU trademark application that was

pending on January 1, 2021 may apply to register the same trademark with the UKIPO. An

applicant who files by September 30, 2021 will retain the original EU trademark filing date

as well as the original priority and UK seniority dates. For more information about the

UKIPO’s trademark policies relating to BREXIT, see GOV.UK,

EU Trade Mark Protection

& Comparable UK Trade Marks

,

https://www.gov.uk/guidance/eu-trademark-protection-and-comparable-uk-trademarks#history

(accessed December 19, 2025).

If an eligible applicant filed an application or obtained a

registration in a country that is a member of the Paris Convention, Inter-American

Convention, World Trade Organization, or European Union, the applicant can claim the

benefits of either §44(d) or §44(e) if the applicant meets the requirements of those

sections.  An eligible applicant may also file under

either

§44(e) or

§44(d) based on an application filed or registration obtained in Taiwan.  On the other hand,

if the applicant filed an application or obtained a registration in a country that is a

member of the Buenos Aires Convention, the applicant may seek registration under §44(e), but

may

not

obtain a priority filing date under §44(d).  See

Appendix

B

for additional information.

In the case of treaties and agreements not covered in

TMEP Appendix B

, an applicant can establish its eligibility for the

benefits of §44 by providing evidence of statutes establishing reciprocity between the

United States and the relevant country.

See CandyVerse, LLC v. Zeeth

Ltd.

, Opp. No

44(e), but

may

not

obtain a priority filing date under §44(d).  See

Appendix

B

for additional information.

In the case of treaties and agreements not covered in

TMEP Appendix B

, an applicant can establish its eligibility for the

benefits of §44 by providing evidence of statutes establishing reciprocity between the

United States and the relevant country.

See CandyVerse, LLC v. Zeeth

Ltd.

, Opp. No. 91289595, 2025 TTAB LEXIS 459, at *18-19 (2025) (finding

applicant's §44(d) claim of priority acceptable because the juristic applicant's country of

origin was the British Virgin Islands, a British self-governed overseas territory under

which applicant was organized, and that, although the British Virgin Islands was not party

to a relevant treaty or agreement with the United States, the Virgin Islands Trade Marks Act

(VITMA) extended priority rights to U.S. nationals reciprocal to those extended by §44(d) to

foreign nationals). Examining attorneys may also consult sources such as Donna A. Tobin,

Trademarks Throughout the World

(5th ed. 2025) and Ethan Horowitz,

Horowitz on World Trademark Law & Practice

(2025), available to

USPTO employees from the Trademark Law Librarians, for information about the trademark laws

of foreign countries.  Additional resources are listed in Appendix B.

See

TMEP

§1002.01

for information about how the examining attorney should

handle an application in which the applicant is not entitled to registration under §44(e),

and

§1002.02

for

information about how the examining attorney should handle an application in which the

applicant is not entitled to priority under §44(d).