Section 44(d): The Secret Weapon in International Trademark Arsenal

Understanding Trademark Office Section 44(d)

Section 44(d) of the trademark USPTO regulations offers a unique pathway for companies seeking trademark protection in the United States, especially those with existing or pending applications in foreign jurisdictions. It allows an applicant to claim priority in the U.S. based on an earlier trademark application filed in a foreign country. This provision is grounded in the principles of the Paris Convention, an international treaty that facilitates industrial property rights protection among its member countries.

Requirements to File Trademarks Under Section 44(d):

• Within six months of the initial foreign application's filing date, a priority claim must be submitted;
• The applicant's country of origin should be the source of the foreign registration;
• The trademark in the U.S. application under §44(d) should exactly match the trademark in the first foreign application filed;
• The applicant is required to specify the filing date, serial number, and country of the initially filed foreign application;
• The applicant must submit a verified declaration of their genuine intent to use the trademark in commerce;
• The applicant's home country and the country where the foreign application was filed must both be signatories to an international treaty or agreement with the U.S. that recognizes priority; and
• The description of goods and services in the application must not surpass what is specified in the initially filed foreign application.

Strategic Advantages of Section 44(d)

The primary advantage of Section 44(d) is the ability to backdate the U.S. trademark application to the date of the foreign application, provided the U.S. application is filed within six months of the foreign filing. This 'priority claim' can be a game-changer in the competitive world of trademark registration, where the date of filing can determine the outcome of potential conflicts.

For companies operating internationally, Section 44(d) is a tool to streamline trademark protection across borders. A brand can first secure a trademark in a jurisdiction with a potentially quicker registration process and then use that date to bolster its application in the U.S. This strategy not only saves time but also provides a level of security in the U.S. market while the domestic application is pending.

"Stealth filing" in trademark law represents a savvy yet intricate strategy that leverages the combination of international treaties and specific national laws to protect intellectual property globally. By initially filing a trademark in a country where applications are not publicly accessible, companies can maintain confidentiality around their upcoming products or services. This tactic becomes particularly powerful when paired with Section 44(d) of the USPTO regulations, allowing these companies to subsequently file in the U.S. while claiming the earlier foreign application's priority date.

Examples of successful stealth trademark filings using Section 44(d) of the USPTO guidelines:

• Disney: Disney strategically filed for "DISNEY PIXAR LUCA" trademark in Jamaica, a non-public jurisdiction, and then in the U.S. within 6 months, using stealth filing to maintain confidentiality and secure an earlier priority date.
• WeWork: WeWork Companies, LLC submitted an application to the USPTO for the trademark "WEWORK ON DEMAND" on December 29, 2020, following their initial filing in Mauritius on July 1, 2020.
• The Chicks: The Chicks (f/k/a Dixie Chicks) lodged an application under Section 44(d) for "THE CHICKS" as their new band name, having previously registered the name in The Kingdom of Tonga.

While Section 44(d) provides significant advantages, it comes with its limitations. The section does not inherently provide confidentiality for the applicant or the application details, as USPTO applications are public records. Additionally, the applicant must have a bona fide intention to use the mark in U.S. commerce, a requirement that underscores the need for a coherent international business strategy. Further, should the trademark examining attorney, after advancing another trademark application, identify a conflicting application with priority under section 44(d) that examining attorney should issue a supplemental action to address the issue. If the conflicting mark has already been registered, the USPTO would simply lacks the jurisdiction to cancel it. Consequently, a section 44(d) application would need to file a petition with the Trademark Trial and Appeal Board to cancel the conflicting registration

International Trademark Filings

Section 44(d) is a testament to the interconnected nature of today's global economy, providing a valuable tool for companies looking to protect their trademarks internationally. By allowing the backdating of U.S. applications based on foreign filings, it offers a strategic advantage in securing brand identity across borders. As businesses continue to expand globally, understanding and utilizing provisions like Section 44(d) will be crucial in navigating the complex waters of international trademark law.

Expert in Section 44D of U.S. Trademark Law, our specialized legal services of Wilson Whitaker Rynell streamlines your international trademark registration. Benefit from priority filing dates and simplified U.S. market entry. As seasoned trademark attorneys, we navigate the complexities of Section 44D, ensuring your global brand protection. Protect your brand worldwide with our trusted trademark services. Your global brand security is our priority.  Experienced trademark attorneys can assist you in both U.S. and international trademark filings.