As business becomes more and more global, obtaining an international trademark registration for your trademark is important. It is important because unlike the United States where the first to use a trademark governs, all foreign countries award trademark rights to the first to register their trademark.
The United States Patent and Trademark Office allows a trademark owner to file a trademark application claiming an intent-to-use basis. Before the mark will register, the trademark owner must submit evidence of use in commerce. The trademark owner has six opportunities to provide evidence of use to the Trademark Office, which last three years from the date of the notice of allowance. Assuming no major refusals that need to be overcome, relying on an intent-to-use basis will allow the trademark owner to keep an application alive for about three and half to four years.
Another option that applicants should consider is relying on a foreign registration. Under Section 44(e) of the Latham Act, the owner of a foreign registration will obtain a United States trademark registration even if the mark if not being used in commerce. Assuming the mark in the Section 44(e) application is otherwise registrable, the U.S. Trademark Office will issue the registration upon receiving a copy of the foreign registration. After the registration issues, the trademark owner must produce evidence of use by the sixth anniversary of the registration date in the U.S.
Foreign countries do not require evidence of use before they will issue trademark registrations. Accordingly, a U.S. trademark applicant can file first in, for example, the European Union, obtain an international trademark registration, and then rely on Section 44(e) to get a registration in the U.S. Obviously, the key to this strategy is selecting a foreign a country that examines applications in a relatively expeditious manner. The European Union expeditiously examines trademark applications, the Chinese Trademark Office does not.
Why utilize this strategy? For one, you may need the additional time from a research and development perspective. Having an extra two years can be very important. It can also be used as part of an enforcement strategy. Additionally, when there is a potentially conflicting application, the USPTO will suspend the examination of the later filed application until the conflicting application matures into a registration. But with a registration based on Section 44(e), the applicant will have to respond to the office action.