How Can I Register a US Trademark Based on a Foreign Registration?

Foreign trademark registration
 

Section 44(e) of the US Trademark Act (Lanham Act) allows for the registration of a trademark in the US based upon a prior foreign registration. 
Typically, a US trademark is registered based upon its actual use in relation to a specific goods or services sold in interstate commerce, within the US.

A foreign trademark can register in the US under this same criteria—but also, under certain circumstances, simply based upon its registration in its country of origin.

However, there are specific requirements for this privilege.

Requirements for Foreign Trademark Registration in the United States

To register a non-US trademark in the United States merely based upon its prior registration in a foreign country, the registration must meet the following criteria:

  • The registration must be valid in the applicant’s country of origin;
  • The applicant must be the owner of the registration in that country of origin;
  • The country of origin must be one that is party to a treaty or agreement with the US that allows for such trademark registration, or extends reciprocal treaty rights to US nationals;
  • A true or certified copy of the registration in the country of origin must be submitted by the applicant;
  • A verified statement that the applicant has a bona fide intention of using the trademark in commerce in the United States;
  • The scope of the proposed US trademark registration cannot exceed that of the original registration in the home country of origin.

What Is a Valid Country of Origin for a Foreign Trademark Registration?

A valid country of origin for purposes of registering a US trademark is defined in the US Trademark Act as “… the country in which [the applicant] has a bona fide and effective industrial or commercial establishment, or if [the applicant] has not such an establishment, the country in which [the applicant] is domiciled, or if [the applicant] has not such a domicile in any of the countries described in paragraph (b) of [this section of the Trademark Act], the country of which [the applicant] is a national.”

Whew. That’s a mouthful, as is usually the case with US statutes.

What it essentially means that is that the country of original registration of the foreign trademark must be on in which the applicant legally resides or conducts business.

Furthermore, the country of origin must be one, as noted above, which is party to a treaty concerning trademark registration rights with the United States and/or which, by treaty or other agreement, offers US citizens “reciprocal” trademark registration rights within that other country.

The list of nation members of international trademark agreements is located here. There are too many to list by name within this article.

However, for example, Turkey, along with the US, is signatory to the Paris Convention for the Protection of International Property. Turkey offers a 10-year term of trademark registration to US registrants.

The trademark registration terms of some countries are dependent on others. For example, the terms of trademark registration in the Solomon Islands is dependent on the United Kingdom. Although a sovereign nation, the Solomon Islands (by virtue of the Tripartite Convention of 1899) is a former colony of the United Kingdom.

Thus, this legality persists.

Use in US Commerce of the Foreign Trademark Registration

The applicant must include a verified statement of the intention to use the trademark in US commerce. If the statement is not filed along with the original application, the applicant must later allege that it intended to use the mark in US commerce as of the filing date.

The US Patent and Trademark Office (USPTO), with which the application is filed, does not second-guess the good faith nature of the statement. The sworn statement will suffice.

However, questions of good faith can certainly in litigation concerning the registration among private parties, during opposition or cancellation proceedings.

Applications filed solely on the basis of a foreign registration are not required to include a Specimen evidencing use in commerce, as are applications filed based on that use.

If a Specimen is provided nevertheless (or in conjunction with a multiple basis application), the USPTO Examiner assigned to the file may well review it for issues supporting a refusal of the application, such as mere descriptiveness. 

Foreign applicants may register or amend an application to register to the Supplemental Register without alleging any use.

Scope of the Foreign Trademark Registration’s Use in the US

The scope of the US trademark registration cannot exceed the scope of the original registration in the country of origin.

That is, if the original registration was a single-class registration, for, say, a software product, the US registration cannot include multiple classes: the software product itself AND software development or computer maintenance services, for example.

Trial lawyers understand the notion of sticking to the scope of prior direct examination on cross-examination. That’s as good an analogy as anything here.

Foreign Trademark Registration Applications May Be Based On More Than 1 Registration

It is finally worth noting that a US trademark registration application may be based on more than 1 foreign registration.

For example, if an applicant has registered one trademark in, again, Turkey for wearing apparel and a separate trademark in the same country of origin for handbags and purses, a single US trademark registration application may be filed encompassing both classes of goods—so long as it doesn’t exceed the scope of the “combined” original foreign registrations.

Foreign Registration Via The Madrid Protocol

Foreign trademark registration in the US via the international treaty known as the Madrid Protocol carries separate filing requirements.

The Madrid Protocol is discussed in a separate article on our site. 

However, in short, the Madrid Protocol is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO).

To apply for a registration under the Madrid Protocol, the application must be a national of or domiciled in one of the treaty signatory states. The application must, as with Section 44(e), above, based on an existing registration in one of those signatory states. The application must also be for the same mark and within the same scope of products or services as is the original registered mark.

The application is submitted through the IB, not the USPTO. It is processed by that organization but reviewed by each of the states parties involved.

Foreign Trademark Registration in the United States: The Bottom Line

The bottom line is that registration of a foreign trademark in the US is not only possible but routine, so long as the process is properly handled with a modicum of due diligence.

Registration in the US may always be refused on the same bases as any USPTO trademark application: likelihood of confusion, mere descriptiveness, etc. However, it can be refused for additional failures to adhere to the requirements described above.

If a foreign applicant, further, is applying for a priority filing date under Section 44(d) of the US Trademark Act, there are additional questions of timeliness that must be reviewed.

In short, it is essential to retain the services of a knowledgeable US trademark attorney before attempting to register a foreign application.

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.

 

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