The “First-Filed” Requirement

The application relied upon under §44(d) must be the

applicant’s first application filed in any treaty country for the same mark and for the same

goods or services. The USPTO will presume that the application identified as the basis for

the priority claim was the first filed, unless there is contradictory evidence in the record

(e.g., in the application itself or submitted via a Letter of Protest that has been

accepted; see

TMEP

§1715.01

regarding appropriate subjects to be raised in a letter of

protest). If the first-filed application was withdrawn, abandoned, or otherwise disposed of

without having any rights outstanding, and did not serve as a basis for claiming a right of

priority, the §44(d) priority claim may be based upon a subsequently filed application in

the same foreign country or common office of several states. Generally, a written

explanation by the applicant or the applicant’s attorney that the first-filed application

was withdrawn, abandoned, or otherwise disposed of without having any rights outstanding,

and did not serve as a basis for claiming a right of priority, will be sufficient.

The requirement for the same goods or services means that

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

and must be different from, and not equivalent to, the identification covered by any

previous application or registration for the mark in a treaty country.

See

37 C.F.R.

§2.32(a)(6)

;

TMEP §1402.01(b)

. Thus, for

example, if evidence in the record indicates that an applicant who owns an EU trademark

registration with the European Union Intellectual Property Office for “footwear”

subsequently files a French trademark application for “coats, pants, and shoes,” and then

files a U.S

y

previous application or registration for the mark in a treaty country.

See

37 C.F.R.

§2.32(a)(6)

;

TMEP §1402.01(b)

. Thus, for

example, if evidence in the record indicates that an applicant who owns an EU trademark

registration with the European Union Intellectual Property Office for “footwear”

subsequently files a French trademark application for “coats, pants, and shoes,” and then

files a U.S. application within six months seeking a priority filing date for “coats, pants,

and shoes” based on the French trademark application, the §44(d) priority claim would be

valid only as to “coats, pants” because the French trademark application was not the first

filed in a treaty country for “shoes,” which is encompassed by or equivalent to “footwear”

in the EU trademark registration. Note, however, that if the foreign application that formed

the basis for the EU trademark registration was itself filed within six months of the filing

date of the U.S. application, the EU trademark application may serve as a basis for priority

for “shoes” in the U.S. A single U.S. application may claim priority for different goods and

services on the basis of different foreign applications for the same mark as long as all

foreign applications claimed were the first-filed for the identified goods/services and were

filed no earlier than six months prior to the U.S. application filing date.

If the examining attorney determines that the application

relied on was not the first filed in any treaty country as to some or all of the

goods/services, the examining attorney must advise the applicant that it is not entitled to

priority as to the relevant goods/services. If the applicant has not claimed another filing

basis, the examining attorney must require the applicant to claim and perfect a basis for

any goods/services not entitled to priority before the application can be approved for

publication or for registration on the Supplemental Register

xamining attorney must advise the applicant that it is not entitled to

priority as to the relevant goods/services. If the applicant has not claimed another filing

basis, the examining attorney must require the applicant to claim and perfect a basis for

any goods/services not entitled to priority before the application can be approved for

publication or for registration on the Supplemental Register. See

TMEP §1003.03

regarding registration basis

for §44 applications and

§806.03

regarding amendment of the basis.

If the applicant is not entitled to priority as to any

goods/services, the examining attorney must ensure that the priority claim is deleted from

the Trademark database. If the applicant is entitled to priority as to some, but not all, of

the goods/services, the examining attorney must ensure that the identification in the

Trademark database indicates those goods/services that have priority.

See

TMEP

§806.02(a)

. The examining attorney must also conduct a new search

of USPTO records for conflicting marks as to any goods/services not entitled to priority.