Written by Mark Terry 

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.