Priority Determinations in Trademark Law - Foreign Rights

Many cases in trademark law will turn on which party has priority of use of the subject trademark. Use of a trademark in a foreign country generally will not give rise to rights in the United States. The rationale for this rule is that the principle of territoriality is fundamental to trademark law. Trademark rights are based on each country's respective laws. See Person's Co. Ltd. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990).

However, priority rights in a proceeding before the Trademark Trial and Appeal Board can be established under Section 44 of the Lanham Act based on the filing of an application or on the issuance of a registration in a qualified foreign country. A qualified country is one that is a party to a treaty with the U.S. that provides a right of priority or extends reciprocal rights to priority to U.S. nationals. Applicants should file under Section 44(d) of the Trademark Act if within six months of the U.S. trademark filing a trademark application was filed in a qualified foreign country.

In other words, if a trademark applicant makes a filing in a foreign country and then within 6 months of the filing date applies to the USPTO, this applicant can acquire a priority right dating back to the filing date in the foreign country. The filing date of the foreign application is equivalent to the constructive use date of an intent-to-use application under Section 7(c) of the Lanham Act. Both dates can be relied upon to establish priority rights.

However, it should be pointed out that in order for the USPTO to issue the U.S. registration, the applicant must establish a basis for registration under the Trademark Act pursuant to Section 1(a) use in commerce, Section 1(b) bona fide use in commerce or Section 44(e) issuance of a registration in the applicant's country of origin. Notably, the application filed in a qualified foreign country need not be the applicant's country of origin. Section 44(c) of the Trademark Act defines the country of origin as the country in which the applicant has a bona fide and effective industrial or commercial establishment or if there is not an establishment, the country where the applicant is domiciled or where the applicant is a national. Keep in mind that an applicant can have more than one country of origin.

A party should file their trademark application under Section 44(e) of the Trademark Act if a foreign trademark registration has been issued to the party in its country of origin. In this case, there is no six-month rule that applies to the filing. A trademark application under this section is not required to allege the mark was used in the U.S. and there is no requirement to submit specimens. Filing under Section 44 (e) of the Trademark Act entitles the applicant to use the filing date as a constructive use date regardless of when actual use commences in the U.S.

A Request for extension of protection to the United States may be included in an international application or in a subsequent designation made after the International Bureau registers the trademark. An application requesting an extension of protection to the U.S. is referred to as a Section 66(a) application. A party filing a 66(a) application will have a constructive use date of the earliest of the following events: (1) the international registration date; (2) the date the Bureau recorded the subsequent designation for request for extension to the U.S. if the request was made after the international registration date; or (3) the date of priority claimed pursuant to Lanham Act §67. Constructive use is of course contingent on the registration of the mark on the Principal Register of the United States Patent & Trademark Office.

Trademark priority rights based on foreign rights should not be overlooked when either conducting trademark clearance or when priority issues arise in a proceeding before the Trademark Trial and Appeal Board. If you have any questions concerning trademark priority rights, kindly contact our office and request a courtesy consultation with a trademark attorney.