Trademarks are solely protected in the country or region in which they are used or registered. This means that the United States Patent and Trademark Office and U.S. trademark laws do not protect any registration or application for trademarks in a foreign country. However, having a registered trademark or a trademark application on file in one country may allow the trademark applicant to claim priority to the earlier application in other countries, including in the United States.
Because virtually all countries are members of the Paris Convention, an international treaty concerning patents and trademarks, trademark applicants in one country can claim priority to register their trademarks in other countries. This claiming of priority must be done within six months after the trademark application is filed in an original country. Claiming priority allows the trademark application being filed in the new country to be treated as if it were filed on the same day as in the original country.
Having the earliest possible filing date for your trademark is a major advantage in the trademark world. Not only will the priority-based application receive priority over any applications filed afterward, but the priority-based application will also have priority over any applications filed between the actual filing date in the new country and the filing date in the original country as the priority date.
In order to receive priority for a trademark registration in the U.S., the applicant must meet certain requirements given under the Paris Convention. According to Section 1003 of the U.S.P.T.O.'s Trademark Manual of Examining Procedure:
The requirements for receipt of a priority filing date under §44(d) for a trademark or service mark application are:
(1) The eligible applicant must file a claim of priority within six months of the filing date of the first-filed foreign application.
(2) The applicant must: (a) specify the filing date and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.
(3) The applicant must provide a verified statement that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
(4) Both the non-United States applicant’s country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority or must extend reciprocal rights to priority to U.S. nationals.
(5) The scope of the identification covered by the §44 basis may not exceed the scope of the identification in the foreign application.
(6) The applicant must specify the serial number of the foreign application.
Claiming priority does not affect any other part of the application other than changing the effective filing date to the new priority date. It is also important to know that just because the trademark application was successfully registered in the original country does not mean it will automatically be successfully registered in the new country. Also, even if the original country’s application is rejected, the application in a new country in which priority was claimed will still be accepted. The only difference will be that the later filing date in the new country might be reestablished as the official filing date instead of the priority date.
Because the ability to claim priority exists in a wide range of countries, the costs and certain requirements may differ for each country. Before claiming priority in a specific country, it is advised that the applicant determine the requirements of that country prior to filing.
Written by Liliann Vizcaino. Please note that the above discussion is for general information purposes only. For more information, please contact John H. Choi & Associates LLC at email@jchoilaw.com or 201.580.6600.