What Searchers Need to Know about an International Trademark

An international trademark registration is a lot like an intent-to-use trademark application, which we discussed before was a game changer when it comes to conducting trademark searches. The international trademark registration just has a little more oomph than the intent-to-use trademark application.

Because the United States entered into a number of international treaties that impact trademark rights, it was required to pass a law implementing the treaty provisions. Section 44 of the Trademark Act implements the various treaty provisions. Section 44 applications come in two varieties:  (1) 44(d) that allows the U.S. applicant to security a priority filing date based on the prior filed foreign application; and (2) 44(e) that allows the U.S. applicant to obtain a U.S. registration based on a foreign registration for the same mark. In a U.S. application based on Section 44, use in the United States is not required prior to issuance of a U.S. trademark registration.

In other words, a trademark registration based on a 44(e) filing basis is a lot like an intent-to-use application except that the registration will issue and be viable for at least 6 years from the date the registration issues. This is double the life of an intent-to-use trademark application, which can remain alive without proof of use in the United States for 3 years.

Like an intent-to-use application, a mark that is subject to a Section 44(e) registration will not be discovered through an Internet search alone. You have to search the United States Patent and Trademark Office Database. What makes a Section 44(e) registration different is that it can prevent the registration of your mark immediately whereas an intent-to-use application will suspend action on a trademark application until the mark registers. As a trademark applicant, this limits the filing strategies available to you.

Section 44 does not apply only to foreign companies. a U.S. company that owns an international trademark registration can rely on Section 44 in the U.S., and U.S. companies are doing just that. Apple owns 24 registrations based on Section 44(e). Some of these registrations appear to have been acquired from foreign companies, but some were filed directly by Apple.

Why would a U.S. company rely on Section 44 instead of the domestic trademark application filing bases? Except for the United States, foreign countries do not require use of a trademark in connection with the applied for goods before the registration issues. This means that Apple, for example, could file a trademark application in the European Union for APPLE in connection with “airplanes,” obtain an international trademark registration, and then file a trademark application in the United States under Section 44(e) for APPLE in connection with “airplanes” and obtain a registration. Apple needs to have bona fide intent to offer “airplanes” under the APPLE mark when it files the application, but practically it is unlikely that the applicant’s intent – especially a large company like Apple – will ever be challenged.

Section 44 applications and registrations are game changers like intent-to-use trademark applications, which is why searching the United States Trademark Office database is critical before investing time and money in a new brand.

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