When applying for a new trademark in the United States, it is common for foreign applicants to worry about the “use in commerce” requirement. Indeed, the United States Patent and Trademark Office (USPTO) normally requires that the mark be in use in commerce or that there is a genuine intention to use it in the future. As a result, formal evidence of current use of the mark is required.
This requirement is often difficult to accomplish, especially for companies that have not already launched their products or services in the U.S. market.
Fortunately, the U.S. Trademark Act offers a solution to overcome this obstacle: the provision under Section 44(e).
This exception allows companies that have registrations in their own country to apply the registration of their trademark in the U.S. without having to provide evidence of use of the trademark.
Requirements for Applying Under Section 44(e)
In order for an applicant to take advantage of this exception, the following requirements must be met:
- Foreign Trademark Registration: the applicant must provide a copy of the trademark registration certificate from the country of origin for the mark he wishes to register in the U.S.
- English translation: an official English translation of the document containing the foreign trademark registration must be submitted.
- Listing of goods and services: the company must also provide a list of the goods and services for which it will use the mark, which must not exceed the scope of those listed in its country’s registration.
- Bona fide intention to use the mark in commerce: the applicant must provide a statement of bona fide intention to use the mark in U.S. commerce as of the filing date of the application.
It is important to clarify that possessing a foreign trademark registration does not ensure the granting of the same trademark in the U.S., as it will still be subject to USPTO examination. However, the Section 44(e) exception is a valuable tool to facilitate the growth of those companies that have a presence in the international market and wish to establish themselves in the United States, by not having to demonstrate evidence of use in that country as of the filing date of the application.
This article does not constitute legal advice. If you need assistance in filing a trademark registration, please contact us at info@lermanszlak.com.
