A foreign trademark registration can be registered in the United States through three different processes.
This Article will discuss the pathways to US trademark registration for foreign trademark owners. It will also discuss the steps and processes involved.
First, some basics.
Where Are Foreign Trademark Registration Applications Filed?
Applications based on foreign trademark registrations are filed with the US Patent and Trademark Office (USPTO). Regardless of the origin of the application, the USPTO will review each for procedural and substantive problems.
Depending upon which pathway you take to foreign trademark registration in the US, the grounds for acceptance will vary.
US Trademark Applications Based on Foreign Registration: Section 44(e)
The first pathway is an application based on a completed foreign trademark registration.
This is known as a Section 44(e) application. It is named after the section of the Lanham Act (US Trademark Act). This Section allows the registration of a trademark based on a prior foreign registration. This is true so long as the country of origin also allows for the registration of US trademarks within its own system.
Likewise, the applicant must be the owner of the foreign trademark registration. An agent or third party cannot file for US registration of a foreign trademark if it is not the owner in that country. The application cannot be based on a contractual relationship only.
A foreign registration application does not require proof of use for initial approval. However, the application requires a verified statement of a bona fide intention to use the trademark in US commerce. Further, that use must eventually occur. Evidence of use will need to be filed later to maintain the US trademark registration, as described below.
US Trademark Applications Based on Foreign Registrations: Section 44(d)
The second pathway is described in Section 44(d) of the Lanham Act. This pathway allows a US trademark registration application to be filed based upon the prior filing of a foreign application. This is in contrast to the foreign registrations covered by Section 44(e).
The purpose of this pathway is to obtain the priority date of the earlier filed foreign application for the US application. Use in commerce in the US is required for final registration of a Section 44(d) foreign registration application.
Section 44 US registrations exist independently of the underlying foreign registration. Owners of US registrations based on Section 44 must, as noted, use the trademark in US commerce as quickly as possible after the registration or risk cancellation.
The third pathway is for registration via The Madrid Protocol.
International Trademark Applications Under Section 66(a) (The Madrid Protocol)
The Section 66(a) registration process allows a US trademark to be issued based on a foreign trademark registration under the terms of an international treaty. This treaty is called The Madrid Protocol.
It is an multilateral treaty under which member states agree to allow registration of trademarks already registered in other member states. The treaty creates an international system for this cross-border trademark registration.
Thus, for example, under the Madrid Protocol, if you have registered your clothing line trademark in Türkiyë, you can then register the mark in the United States under Section 66(a) because both the U.S. and Türkiyë have signed the treaty.
A Madrid Protocol registration can be filed in multiple countries simultaneously. However, each member state may have its own specific requirements. Some require domestic attorneys on record, for example. (Others do not.)
What is the Madrid Protocol process in the U.S.?
The Section 66(a) Foreign Registration Trademark Process: Step-by-Step
Step 1. Application Filed.
Upon filing of the initial trademark registration application under Section 66(a), it is assigned an application number. Then, the waiting begins. The application is queued for examination by the USPTO.
Step 2. USPTO Reviews Application.
Approximately 6-8 months later (as of this writing), a USPTO Examiner is assigned to the file. The Examiner determines whether the trademark is registrable. Depending on the outcome of the examination, the application proceeds to either Step 3a or 3b, described below.
Step 3a. USPTO approves trademark and publishes it for opposition.
If the Examiner does not refuse the application, it is “Approved for Publication.”
During the 30-day “Publication Period,” third parties may Oppose the registration of the trademark. When an application is Opposed, the matter is adjudicated in the Trademark Trial and Appeals Board (TTAB).
The USPTO Examiner plays no role in this form of private litigation.
Step 3b. Examiner Refusal (Office Action Issued)
If the Examiner refuses the application, he or she will issue a refusal. This refusal is called an “Office Action.”
The Office Action will be issued via letter. This letter is emailed to the foreign registrant’s US counsel of record. It explains the bases for refusal, as well as any remedying requirements. The applicant has (as of December, 2022) 3 months to respond. If not, the application is Abandoned. See Steps 4a and 4b, below.
Step 4a. Office Action Response.
An applicant must timely submit a response that overcomes each refusal and satisfies every requirement in the Office Action in order to avoid Abandonment. The same Examiner who issued the Office Action will review the Response.
Depending on whether the Response is successful or not, the Application proceeds to either Step 5a or 5b, below.
Step 4b. Application Abandonment.
If the 3-month deadline is missed, with no Response filed, the application is Abandoned.
Step 5a. Office Action Overcome/Approval for Publication
However, if the Office Action refusal is successful, the Examiner will approve the application for Publication.
Step 5b. Final Refusal Issued
Alternatively, if the Examiner is not convinced by the Office Action response, a Final Office Action is issued. This leaves the applicant with few options.
If the applicant has new evidence or argument to offer, a Request for Reconsideration can be filed for review by the same Examiner.
Otherwise, the applicant can:
- Give up, re-brand, and re-file an entirely new trademark registration application; or
- File an appeal.
Appeals are filed with the TTAB. (It is also possible to file a Petition to the Director under very limited circumstances.)
Step 6a. Appeal Final Refusal to the TTAB
Final refusals are appealed to the TTAB, as noted. Strict deadlines apply for the timely filing of a Notice of Appeal.
Step 6b. Application Abandonment
Failure to respond within 3 months of issuance of the Final Office Action results in application Abandonment. A Notice of Abandonment will be issued.
Step 7. Approval for Publication
If there are no Office Actions issued or any refusal is overcome, the Examiner will approve the application for Publication.
The so-called “Publication Period” is a 30-day period of time during which the application is published in the USPTO’s Trademark Official Gazette (TMOG).
During this period, third parties may 0ppose the application’s registration. Once an Opposition is filed, the dispute is, again, heard before the TTAB.
However, if the foreign registrant fails to respond by the required deadline, the Opposing party will be granted a default judgment. The application will, in all likelihood, be Abandoned.
If a response is timely filed, it proceeds much like any other US Federal litigation does. (Further detail regarding this process and the deadlines involved is outside the scope of this Article.)
Step 8. Approval for Registration
After Publication, a surviving foreign trademark registration application is approved for registration.
Once the foreign registration becomes a US registered trademark, the owner has 2 ongoing obligations:
- To monitor the trademark register and marketplace for infringement;
- To file renewal documentation at regular intervals.
In particular, the new foreign registrant must file a Declaration that the mark is, in fact, in use in commerce in the United States.
Step 9. Section 71 Declaration Filing
A Declaration of Use or Excusable Nonuse must be filed no more than 6 years after registration. This “Section 71 Declaration” proves that the foreign registration is now used in commerce in the United States. A Specimen evidencing that use accompanies the Declaration.
The foreign trademark registration will be canceled if the Section 71 Declaration is not timely filed. In turn, the USPTO will notify the International Bureau—which administers the Madrid Protocol system—of the cancellation.
Once the initial Section 71 Declaration is filed, further Declarations must be filed every 10 years. In the US, a trademark registration is active only so long as use in US commerce continues.
Step 10. Periodic Renewals of the International Registration
Likewise, the trademark registrant must also renew the underlying international registration with the International Bureau every 10 years from the date of international registration.
Failure to continue to renew the international registration will result in cancellation by the International Bureau, with resulting notification to the USPTO.
Foreign Trademark Registration in the United States: The Bottom Line
The bottom line is that US trademark registration based upon a foreign registration is both possible and advisable for multinational businesses active in the US market.
However, it is vital that you retain a US-licensed trademark attorney to assist you. New USPTO rules require foreign applicants to be represented by US counsel.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
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