Filing a trademark in the US with European Priority

Filing a trademark in the United States from a European priority application involves a series of specific procedures that are governed by both U.S. and international law. This guide will walk you through the steps involved, explain the legal framework, and provide practical tips for navigating the process effectively. Keep in mind, having a European trademark does not guarantee a US registration for the same mark.

Understanding Priority Claims

The concept of a "priority claim" in trademark law allows an applicant who has filed a trademark application in one member country of the Paris Convention or the World Trade Organization (WTO) to claim priority from that first application in subsequent applications filed in other member countries. This means that the subsequent applications will be considered as having been filed on the same date as the first application. The priority period is six months from the date of the first filing.

The practical benefit of claiming the maximum priority period of six months is that other trademarks filed within those six months won't be cited to block yours. So if you filed in Europe in February 2024 for the trademark PrioReady, and then filed in the US for PrioReady in August 2024 and were able to claim teh six months back to the February filing, then other marks filed in the US in March, April 2024 can't be cited against yours, and in fact, your trademark application may block them from registering!

Step 1: Assess Eligibility for Priority Filing

To file a U.S. trademark application based on a European priority application, the initial application must have been filed in a country that is a member of the Paris Convention or a member of the WTO. Most European countries are members of the Paris Convention, so applications originating from these countries typically qualify for priority consideration in the U.S.

Step 2: Prepare the U.S. Trademark Application

When preparing to file a U.S. trademark application under a priority claim, the following elements must be included:

1. Mark Identification: Clearly identify the trademark (word, logo, etc.) that you are registering. Perform a search for similar marks in the US to make sure a similar trademark is not already registered. .
2. Goods and Services: Describe accurately the goods and services associated with the trademark. The goods and services in the US application must be equal, or within the scope of the European application/registration.
3. Owner Information: Provide details about the owner of the trademark (individual or corporate entity). The owner must be the same, or you must show common ownership, in order to benefit from the priority claim. You can
4. Basis for Filing: Claim a foreign priority under Section 44(d) of the U.S. Trademark Act (Lanham Act), which necessitates referencing the initial European application number and filing date. If the European trademark is registered, you will also want to add 44(e) basis.
5. Specimen: Provide a specimen showing the use of the mark in commerce, although this can sometimes be submitted later if the application is filed under an "intent to use" basis. If the mark is based on 44(e) for foreign registration, you don't even need to show use in the US for five years, just a bona fide intent to use the trademark in the US.

Step 3: File with the United States Patent and Trademark Office (USPTO)

The application can be submitted electronically using the USPTO’s Trademark Electronic Application System (TEAS). When filling out the application form, specific attention should be paid to the section regarding the claim of foreign priority. This section requires detailed information about the first-filed European application, including its number and the date of filing. It may be better to file TEAS Standard so you can customize the goods to match the European filing exactly.

Step 4: Respond to USPTO Actions

After the application is filed, it will be assigned to an examining attorney at the USPTO. The attorney will review the application to ensure compliance with all U.S. trademark requirements. If issues are identified, the USPTO will issue an Office Action requiring you to address certain aspects. Common issues include clarifications on goods and services descriptions (since the standards for goods/services descriptions are different from country to country), conflicts with existing trademarks (2d likelihood of confusion), or issues with the specimen provided. You'll need a US attorney on the file to respond if you live outside of the US.

Step 5: Publication and Registration

If the application meets all requirements, it will be published in the Official Gazette to allow any party who believes they may be harmed by registration of the mark to oppose it. If no oppositions are filed within 30 days of publication, or if any oppositions are resolved in your favor, the trademark will proceed to registration.

Special Considerations

1. Deadlines: Be vigilant about the six-month priority period. Missing this deadline means losing the priority claim and all the associated benefits.
2. Direct vs. Madrid System: Alternatively, consider using the Madrid System for the international registration of marks if planning to file in multiple jurisdictions outside the EU.
3. Legal Representation: It might be beneficial to hire a U.S.-licensed attorney experienced in trademark law to navigate the process, particularly if you encounter substantive refusals or opposition.

Conclusion

Filing for a U.S. trademark based on a European priority application is an excellent way to extend the protection of your brand while leveraging an earlier filing date. Understanding the detailed requirements and deadlines involved is crucial to take full advantage of the benefits provided by international treaty arrangements such as the Paris Convention. By carefully preparing your application and responding promptly to any USPTO actions, you can enhance the likelihood of successful registration of your trademark in the U.S. market.