Section 44(d) - Priority Filing Date Based on a Foreign Application

Section 44(d) of the Trademark Act,

15 U.S.C.

§1126(d)

, provides for a priority filing date to eligible applicants

(

see

TMEP §1002.02

) who have

filed an application in a treaty country as defined by §44(b) (

see

TMEP §1002.03

). If an

eligible applicant files the U.S. application claiming §44(d) priority within six months of

filing the first application to register the mark in a treaty country, the filing date of the

first-filed foreign application is the effective filing date of the U.S. application.

The requirements for receipt of a priority filing date under

§44(d) for a trademark or service mark application are:

(1) The eligible applicant must file a claim of priority within

six months of the filing date of the first-filed foreign application.

15 U.S.C.

§1126(d)(1)

;

37 C.F.R.

§§2.34(a)(4)(i)

,

2.35(b)(5)

;

TMEP

§§1003.01

,

1003.02

.

(2) The applicant must: (a) specify the filing date 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any prior-filed application has been withdrawn, abandoned, or otherwise disposed of,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.

15 U.S.C. §1126(d)

;

37 C.F.R.

§2.34(a)(4)(i)

.

(3) The applicant must provide a verified statement that the

applicant has a bona fide intention to use the mark in commerce.

15 U.S.C.

§1126(d)(2)

;

37 C.F.R.

§2.34(a)(4)(ii)

. If the verified statement is not filed with the

initial application, the verified statement must also allege that the applicant had a bona

fide intention to use the mark in commerce as of the application filing date.

37 C.F.R. §2.34(a)(4)(ii)

.

provide a verified statement that the

applicant has a bona fide intention to use the mark in commerce.

15 U.S.C.

§1126(d)(2)

;

37 C.F.R.

§2.34(a)(4)(ii)

. If the verified statement is not filed with the

initial application, the verified statement must also allege that the applicant had a bona

fide intention to use the mark in commerce as of the application filing date.

37 C.F.R. §2.34(a)(4)(ii)

.

(4) Both the non-U.S. applicant’s country of origin and the

country where the foreign application is filed 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.

15 U.S.C.

§1126(b)

,

(d)

;

TMEP §§1002.02

,

1002.03

,

1002.04

.

(5) The scope of the identification covered by the §44 basis may

not exceed the scope of the identification in the foreign application.

37 C.F.R.

§2.32(a)(6)

;

TMEP §1402.01(b)

.

(6) The applicant must specify the serial number of the foreign

application.

37 C.F.R. §2.34(a)(4)(i)(A)

; Paris Convention Article

4(D)(5).

For requirements for the receipt of a priority filing date under §44(d) for collective and

certification marks, see

TMEP §1303.01(a)(iii)

for

collective trademark or collective service mark applications,

§1304.02(a)(iii)

for collective membership mark applications, and

§1306.02(a)(iii)

for certification mark applications.

The priority filing date also constitutes a constructive date of

first use in the United States under

15 U.S.C.

§1057(c)

(

see

TMEP

§201.02

), if the application matures into a registration.

See

SCM Corp. v. Langis Foods Ltd.

, 539 F.2d 196, 190 USPQ 288 (D.C. Cir.

1976). Therefore, the priority date cannot be later than the filing date of the U.S.

application.

Section 44(d) of the Trademark Act provides only a basis for

receipt of a priority filing date,

not

a basis for publication or

registration.

See

TMEP §1003.03

see

TMEP

§201.02

), if the application matures into a registration.

See

SCM Corp. v. Langis Foods Ltd.

, 539 F.2d 196, 190 USPQ 288 (D.C. Cir.

1976). Therefore, the priority date cannot be later than the filing date of the U.S.

application.

Section 44(d) of the Trademark Act provides only a basis for

receipt of a priority filing date,

not

a basis for publication or

registration.

See

TMEP §1003.03

.

In a §44(d) application, both the actual date the application

was received in the USPTO and the priority date will appear in the Trademark database.