International Trademark Registration and Protectio
 
M & K understands the needs of foreign trademark applicants.
 
Applications by foreign entities or individuals filed in the United States may enjoy great advantages over United States own domestic applications.
Such advantages include:
Foreign applicants may obtain the original filing date of the foreign application, if filed within 6 months.
(2) If one has obtained a trademark registration in a foreign country, the registrant may obtain registration in the US without having to prove actual use.
(3) Foreign countries often allow broader descriptions and the USPTO often accepts the foreign description of goods
 
If the U.S. application is based on a foreign application in a treaty country, the foreign application may enjoy the filing date (up to six months) of the application filed in a foreign country.
 
If the US application is based on a foreign registration in a treaty country, the applicant does not have to prove "actual use" to obtain a US registration.
 
US trademarks must be filed on one of four bases: (1) Actual Use; (2) Intent to Use; and (3) Section 44(e) foreign Registration in a treaty country or Section 44(d) a foreign application which matures into a foreign registration for 44(e).
 
(1) Actual Use. The applicant must show actual use in US commerce, provide the date of first use, file originals of an example of use, and sign a declaration in the application verifying that the mark is being used.
(2) Intent to Use. The applicant need not prove actual use until the mark has been "allowed." Registration is not completed until actual use is proven, but the applicant maintains the original filing date for protection. A separate filing fee is required when one files a Statement of Use to prove use. The filing of the Statement of Use can sometimes be postponed for an additional two years beyond the original approval ("allowance") date.
(3) Section 44(e) Foreign Registration. The application may be based on a foreign application or registration. However, the application may be based on a foreign application if filed within six months. For a foreign registration, the applicant must provide a certified copy and a translation of the registration obtained in the applicant's "country of origin" and that country must be party to a trademark convention or treaty.
 
The applicant must also certify in the US application that the applicant has a bona fide intent to use the mark in the US. However, foreign applicant utilizing 44(e) have a huge advantage over US applicants, as the applicant does not need to prove actual use in order to obtain registration.
 
There can be problems if a Foreign Applicant under 44 (e), does not actually use their mark:
 
(1) If there is no actual use, the applicant may have a difficult time arguing in an infringement lawsuit against a user of the mark that there is a likelihood of confusion.
(2) Abandonment may be presumed after three years of non-use.
(3) Once the application matures into US registration, the applicant will need to prove use during the sixth year after the registration and again at the time of renewal of the registration after 10 years.
(4) The applicant must sign a statement verifying the applicant has a bona fide intent to use the mark in the US. If there is no use this could be challenged after time.
 
M&K understand the needs of foreign applicants for trademarks and has prosecuted and maintains hundreds of foreign trademarks. For more information, please contact us at info@meredithkeyhani.com or call us at either of our offices.