We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.
Obtaining a U.S. trademark registration based on a foreign registration under §44(e) has its benefits, but what happens after the U.S. registration is obtained? Is the validity and/or status of the U.S. registration tied to the foreign registration? Is the foreign-based U.S. registration subject to the same provisions that apply to all other U.S. registrations? As a Florida Trademark Lawyer, I am often asked these questions by savvy clients seeking U.S. trademark protection for their foreign trademark registrations.
We all
know there are benefits to filing a U.S. trademark application under §44(e)
claiming priority to a foreign registration. The main benefits include not
having to show use in the U.S. or having to provide a specimen. TMEP §1009
states that “Although §44 applicants must assert a bona fide intention to use
the mark in commerce, §44 applicants do not have to allege use or
provide specimens or dates of use prior to registration on either the
Principal or Supplemental Register in an application based solely on §44. Crocker
National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909
(TTAB 1984).” That is a load off for a busy trademark attorney.
But
what happens after the U.S. registration is issued? TMEP §1015 states that once
issued, the United States registration issuing from a §44 application exists
independent of the underlying foreign registration and is subject to all
provisions of the Trademark Act that apply to all other registrations, such
as affidavits of use, renewals, amendments under 15 U.S.C. §1057(e),
assignments, and similar matters. 15 U.S.C. §1126(f). See
Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 14
USPQ2d 1390 (Fed. Cir. 1990); Exxon Corp. v. Oxon Italia
S.p.A., 219 USPQ 907 (TTAB 1982); Reynolds
Televator Corp. v. Pfeffer, 173 USPQ 437 (TTAB 1972); Sinclair
v. Deb Chemical Proprietaries Ltd., 137 USPQ 161 (TTAB 1963).
Therefore, the validity and/or status of the U.S. registration IS
NOT tied to the foreign registration and the foreign-based U.S.
registration IS subject to the same provisions that apply to
all other U.S. registrations. Thus, the foreign-based U.S. registration must
continue to be used properly in order to avoid abandonment. Further, the U.S.
registration must be renewed with the U.S. Patent and Trademark Office
according to the same schedule as domestic-based U.S. registrations, in order
to maintain is good standing with the Trademark Office. Further, the same rules
pertaining to amendments, assignments and cancellations apply to foreign-based
U.S. registration.
In
summary, filing a U.S. trademark application under §44(e) claiming priority to
a foreign registration affords you certain privileges during trademark
prosecution. But once the U.S. registration is issued, the privileges have
ended and the registration is treated like any other U.S. registration.
We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.