When you’re an online business owner, chances are good you’re doing business with Americans.
Regardless of where you call home because that’s the beauty of our global community, right?
So it makes complete sense that you’ve ended up here wondering about federal trademark registration in the U.S.
But actually navigating U.S. trademark registration as a foreign company needs to be handled properly so you don’t waste precious time – or dollars – only to be hit with a rejection.
**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
Options to successfully register your TM as a foreign company
There are actually 2 paths you can take as a foreign company registering a trademark in the United States:
1. Apply directly here in the U.S.
This option might be right for you if you can demonstrate use of the mark here in the United States.
For example, if your goods or services are available online and have been delivered here in the U.S. – that would be proof of use.
2. Apply for registration in a country other than the U.S. first.
If you go this route, you’d start the application in a country other than the U.S. first, then use the foreign application or registration to apply under Section 44(d) or Section 44(e) in the U.S.*
A closer look at the Section 44 filing basis
Section 44(d)
Section 44(d) requires you to file an application here in the U.S. within 6 months of filing an application in another country.
The mark applied for in the U.S. has to be the exact same mark you applied for in the foreign country.
And the goods or services in the U.S. application cannot exceed the scope of the goods or services covered by the foreign application.
Filing under Section 44(d) gives you the benefit of a foreign priority basis – meaning that the date you filed your application in the foreign country is considered the filing date of your U.S. application.
Since the U.S. has a first-to-file system, this could be a HUGE advantage for you…
Let’s say someone else filed an application for a mark similar enough to yours that it’s considered likely to confuse consumers. And they did so before your U.S. filing date.
Yours would still be the first to file if they filed in the U.S. after your foreign filing date!
Section 44(e)
If you have a trademark registration in a foreign country, you can file for registration here in the U.S. under Section 44(e).
You must include a copy of the foreign registration (including a translation if it’s not in English) at the time of filing.
And just like Section 44(d), the mark applied for here in the U.S. has to be the exact same mark you applied for in the foreign country for the same scope of goods or services.
It’s also important to note that a foreign registration does not guarantee registration here in the U.S. – the Examining Attorney will still need to review the application to ensure it meets all other standards required to be met by the USPTO.
One of the cool things about filing an application under either Section 44(d) or Section 44(e) is that you do not have to show use in commerce in the U.S. in your original filing.
Just watch that this doesn’t cause you any problems further down the road…
A common issue for foreign filers
While you don’t have to show use in commerce here in the U.S. when you file your application under either Section 44(d) or Section 44(e), you DO need a bona fide intention to use the mark in U.S. commerce at the time your application is filed.
So what’s the problem?
Foreign applications (and the filing basis of Section 44) often include a long list of goods and services that the mark has never been used for here in the U.S.
This means foreign filers may find it difficult to provide documentation showing the required intent at the time of filing…
Rendering their applications or registrations vulnerable to cancellation.
The solution?
Ensure that goods and services included in your foreign application match the use you will be claiming here in the U.S.
This is a critical step for foreign applicants because it allows you to demonstrate intent at the time of filing.
The best approach to ™ registration in the U.S. as a foreign business owner
Your best bet if you’d like to apply for federal registration of your trademark here?
Only take advice from reputable sources.
Not every resource out there will have your best interests in mind, and not every resource will be applicable to your situation.
Obtaining trademark registration is never a one-size-fits-all journey, so I’d strongly recommend working closely with a TM attorney who can help you consider your own unique set of circumstances.
And lead you in the right direction.
You don’t have to be based in the US for help with this one – book your consultation with Nicole Cheri Oden Law, no matter where you live in the world.
*Note: both your country of origin and the country where the foreign application is filed must be a party to an international treaty or agreement with the U.S. that provides a right of priority, or must extend reciprocal rights of priority to U.S. nationals.
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