If you filed a trademark application outside the United States and are now looking to register that same mark with the USPTO, you may be able to do something that most US applicants cannot: lock in a filing date that predates your actual US application. In conjunction with the registration of your foreign application, it can also help you secure registration in the US before beginning use of your mark in commerce.
What Section 44(d) Does
Section 44(d) of the Lanham Act allows an applicant who has already filed a trademark application in a foreign country to file a corresponding US application and claim the foreign filing date as its effective US priority date. If your US application is filed within six months of the foreign filing date, the USPTO treats your US application as if it had been filed on the same date as the foreign one.
The practical consequence is significant: your US application receives priority over any applications filed after that foreign date. If another party files a US application for a confusingly similar mark in the window between your foreign filing and your US filing, your earlier priority date can be used to block that application from proceeding.
It is worth being clear about what Section 44(d) is and is not. It is a basis for claiming priority, not a basis for registration. A Section 44(d) claim gets you a better filing date; it does not, on its own, get you a registration. You still need a separate basis for the registration itself to issue, and that basis needs to be established before the application can be approved and published.
The Six-Month Window
The priority window is strictly six months from the date of the first foreign application. If your foreign application is dated February 4th, you would need to file your US application on or before August 4th of the same year. There is no provision for extending this period.
The foreign application underlying your priority claim must be the first application filed in any treaty country for that mark and those goods or services. If you have filed in multiple countries, the clock starts running from the earliest filing.
Treaty Eligibility
Not every foreign filing qualifies. To claim Section 44(d) priority, both your country of origin and the country where the foreign application was filed must be parties to an international treaty or agreement with the United States that provides a right of priority. In practice, this covers the overwhelming majority of countries, since the Paris Convention and various bilateral trade agreements bring nearly all major economies within scope. But it is worth confirming before you rely on the priority claim.
Note that if you intend to use Section 44(e) as your registration basis (see below), the foreign filing country must also be your country of origin. That requirement does not apply if you are relying on Section 44(d) for priority only and intend to establish your registration basis through use in US commerce.
What the US Application Must Include
To obtain the priority date, the US application must specify the filing date, filing country, and serial number of the first-filed foreign application. It must also include a verified statement of bona fide intent to use the mark in US commerce and an identification of goods and services that does not exceed the scope of what is covered in the foreign application. You cannot use a Section 44(d) claim to expand your coverage beyond what the foreign application covers.
The mark in the US application must be substantially identical to the mark in the foreign application. Minor differences in how a mark is rendered can raise issues, and the USPTO will examine this question as part of prosecution.
You Still Need a Registration Basis
Because Section 44(d) is only a priority mechanism, the application must also assert at least one basis for registration before it can be approved and published. The three options are:
Section 1(a): Use in US commerce. If you are already selling goods or offering services in the United States under the mark, you can rely on actual use as your registration basis.
Section 1(b): Intent to use. If you are not yet using the mark in US commerce but have a bona fide intention to do so, you can file on an intent-to-use basis. The application will proceed through examination, and you will need to file a Statement of Use showing actual US use before the registration can issue.
Section 44(e): Foreign registration. Once your foreign application matures into a registration in your country of origin, you can use that registration as your basis for the US registration, without ever needing to show US use. This is by far the most common path for foreign applicants filing on a 44(d) basis, and it is the approach the USPTO's own timeline assumes as the default.
Many foreign applicants file on a dual basis, asserting Section 44(d) for priority and indicating an intent to rely on Section 44(e) as the registration basis once the foreign registration issues. If you do not expressly indicate a different intention, reliance on Section 44(e) is presumed.
The Section 44(e) Path to Registration Without US Use
Section 44(e) is worth understanding alongside Section 44(d) because the two are often used together. While 44(d) gives you a priority date based on a pending foreign application, 44(e) gives you a registration basis once that foreign application matures into an actual registration in your country of origin.
The significance of 44(e) is that it allows a US trademark registration to issue without any proof of use in US commerce. For foreign brand owners who are not yet operating in the United States, this can be a meaningful advantage. You obtain the registration, which carries all of the benefits of federal registration, and you begin using the mark in the US at a time of your choosing.
However, Section 44(e) does not eliminate the need to eventually use the mark in the US. While use is not required for the registration to issue, the registration must be maintained with periodic filings showing continued use in US commerce. The first maintenance window arrives between the fifth and sixth year after registration. A registration that is never put to use in the US will not survive that filing.
What Happens While Your Application Is Suspended
When a US application is filed on a dual 44(d)/44(e) basis, examination often concludes before the underlying foreign application has matured to registration. In that situation, the USPTO suspends the US application and waits.
The suspension does not mean you can set the application aside. Every six months, the USPTO will issue a suspension inquiry letter asking for an update on the status of the foreign application. You must respond to each of these letters within three months. If the foreign registration has not yet issued, you confirm that the foreign application is still pending and the USPTO re-suspends the US application for another cycle. This continues until the foreign registration issues.
When the foreign registration does issue, you submit a copy to the USPTO. This is called perfecting the Section 44 basis. The examining attorney then reviews the foreign registration to confirm that the mark, owner, and goods and services align with what is in the US application. At that point the application can proceed toward publication and registration.
If instead you intend to rely on Section 1(a) or 1(b) rather than Section 44(e), the priority filing date is preserved regardless. You are not required to perfect the 44(e) basis to keep the priority date established through 44(d).
What Happens if the Foreign Application Is Abandoned
If the underlying foreign application is later abandoned or withdrawn, the US application can be amended to proceed on a different basis, such as Section 1(b) intent to use. The priority filing date is not automatically lost. As long as the Section 44(d) requirements were met at the time the US application was filed, the priority date is preserved even if the foreign application does not ultimately mature to registration.
Goods and Services Cannot Be Expanded
One constraint that applies across all Section 44 filings is that the US application cannot cover a broader scope of goods and services than the foreign application or registration on which it is based. If your foreign application covers only software products, your US application cannot claim priority for consulting services that were not included. You can narrow the scope in the US application, but you cannot broaden it.
A Practical Note on Timing
The six-month window moves quickly. Foreign applicants who plan to seek US protection should note the priority deadline at the time of their foreign filing, not afterward. Missing the window does not prevent filing in the United States, but it means the US application will be assessed based on its actual US filing date rather than the earlier foreign one, which can affect the outcome if competing applications are pending during that period.
It also helps to understand that the overall timeline for a 44(d)/44(e) application can stretch well beyond a standard US filing. The USPTO has noted that from filing through registration, the process can take five to six years or more, in part because of the suspension periods involved. Planning ahead matters.
Work With a US Trademark Attorney
Section 44 filings involve US procedural requirements running in parallel with what is happening in your home country. Getting the filing basis right, ensuring the mark and goods descriptions align across jurisdictions, responding correctly to suspension inquiry letters, and tracking the perfection deadline all require careful attention. If you have a pending or registered foreign trademark and are considering a US filing, a free consultation is a good place to start.
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