Section 44

This provision is particularly relevant for international businesses and entrepreneurs seeking to establish trademark rights in the United States before they begin selling goods or services here. It provides a pathway to U.S. trademark protection that runs parallel to the standard domestic application routes.

How Section 44 works

A Section 44 application relies on the applicant's home country trademark filing or registration as its basis. The applicant must be a national of, domiciled in, or have a real and effective industrial or commercial establishment in a country that has a qualifying treaty with the United States, such as the Paris Convention or a bilateral agreement.

There are two distinct bases under this provision:

1. Section 44(d). Allows an applicant to claim priority based on a foreign application filed within the six months preceding the U.S. application. This preserves the original foreign filing date as the effective U.S. filing date, which can be critical for establishing priority over competing marks.
2. Section 44(e). Allows registration based on an existing foreign registration. The applicant must own a valid registration in their home country, and the mark must be eligible for registration under U.S. law.

Under either basis, the applicant does not need to show use of the mark in U.S. commerce to obtain registration. However, to maintain the registration after it is issued, the owner must eventually demonstrate use in U.S. commerce, typically at the time of the first renewal filing.

Why Section 44 matters

For foreign businesses expanding into the U.S. market, Section 44 removes a significant barrier. Standard U.S. trademark applications are categorized by filing basis, each with a $350 base application fee per class. Section 1(a) requires proof of actual use in commerce, and Section 1(b) requires a bona fide intent to use. Section 44 offers a third route that leverages existing foreign rights.

The priority claim available under Section 44(d) is especially valuable. If a company files a trademark application in France and then files a U.S. application within six months citing that French application, the U.S. application is treated as if it were filed on the French filing date. This can determine which party wins a dispute between two applicants who filed close in time.

For businesses planning a phased international launch, this provision allows U.S. trademark rights to be secured before market entry, providing legal protection from the outset.

Common uses and examples of Section 44

Section 44 applications arise frequently in international business and brand expansion contexts. Practical examples include:

• A German software company files a trademark application in Germany, then files a U.S. application under Section 44(d) within six months, claiming the German filing date as its U.S. priority date.
• A Canadian retailer that already holds a registered trademark in Canada applies for U.S. registration under Section 44(e), using the Canadian registration as the basis without needing to show U.S. sales.
• A Japanese electronics manufacturer with trademark registrations across multiple countries uses Section 44(e) to extend protection into the U.S. market ahead of its American product launch.
• A French luxury brand files in France first, then uses Section 44(d) to claim priority in the U.S., securing an earlier effective filing date than a competing U.S. applicant who filed in the intervening period.

Key characteristics of Section 44

Section 44 has several defining features that distinguish it from standard U.S. trademark application bases.

• No use in commerce required at filing. Unlike under Section 1(a), the applicant need not have used the mark in the United States before applying.
• Foreign filing or registration as the basis. The application depends on the existence and validity of a foreign application or registration.
• Six-month priority window. Under Section 44(d), the priority claim must be made within six months of the original foreign filing date.
• Treaty requirement. The applicant's home country must have a qualifying treaty relationship with the United States.
• Use required for maintenance. While use is not required to obtain registration, it becomes necessary to maintain the registration over time.

Section 44 vs. Section 1(b)

Both Section 44 and Section 1(b) allow U.S. trademark registration without prior use in U.S. commerce, which is a common point of confusion. The key difference is the basis: Section 1(b) requires a bona fide intent to use the mark in U.S. commerce and triggers a process that culminates in filing a Statement of Use before registration issues. Section 44, by contrast, relies on a foreign application or registration and does not require a Statement of Use to obtain registration. Foreign applicants sometimes file under both bases simultaneously to preserve flexibility.

Considerations and limitations

Several practical factors affect how Section 44 applications are handled.

Validity of the foreign basis. If the underlying foreign application is abandoned or the foreign registration lapses before the U.S. application matures, the Section 44 basis may be lost. Applicants should monitor the status of their foreign filings carefully.

Treaty eligibility. Not all countries qualify. The Paris Convention covers 181 member countries, but the applicant must confirm that their home country has a treaty relationship with the United States that satisfies the Lanham Act's requirements.

Eventual use requirement. Registration obtained under Section 44 is not permanent without use. At the time of the first renewal (between the fifth and sixth years after registration), the owner must file a Declaration of Use at $325 per class, demonstrating actual use of the mark in U.S. commerce, or risk cancellation.

Examination still applies. A Section 44 application undergoes the same substantive examination by the USPTO as any other application. The examiner will assess the likelihood of confusion, descriptiveness, and other grounds for refusal regardless of the foreign basis, and applicants must respond to any office action within three months of issuance.

Related terms and next steps

Understanding Section 44 is most useful in the context of broader trademark law and international brand strategy. Related concepts include.

• Section 1(a). The standard basis for U.S. trademark registration, based on actual use in commerce
• Section 1(b). The intent-to-use basis for domestic applicants who have not yet used a mark in commerce
• Section 66(a). Another route for foreign applicants, based on an international registration under the Madrid Protocol rather than a direct national filing
• Legal notice: Relevant when trademark rights are asserted or enforced following registration.

Foreign businesses navigating U.S. trademark registration often benefit from working with an attorney familiar with international IP law. LegalZoom provides access to independent attorneys who can advise on the appropriate basis for the application and help ensure filings are completed correctly.

FAQs about Section 44

Can a foreign applicant file under Section 44 and Section 1(b) at the same time?

Yes, foreign applicants sometimes file under both bases simultaneously, which preserves the option to proceed under Section 1(b) if the foreign application or registration underlying the Section 44 claim is later abandoned or lapses. Filing under both bases adds flexibility without duplicating the application itself.

What happens to a Section 44 registration if the foreign registration it was based on expires?

The U.S. registration does not automatically cancel if the underlying foreign registration lapses after the U.S. registration has already been issued. The foreign basis is only required to support the application through to registration, not to maintain it indefinitely. Once registered, the U.S. mark stands on its own, subject to the standard U.S. maintenance and renewal requirements.

How does the six-month priority window under Section 44(d) work in practice?

The clock starts on the date the foreign application was filed, not the date it was approved or published, so an applicant who files in Germany on January 1 must file the U.S. application no later than July 1 of the same year to claim that German filing date as the effective U.S. priority date. Missing the window means the U.S. application will be assigned its actual U.S. filing date, which could be later than a competing applicant's.

Does Section 44 give a foreign applicant any advantage during USPTO examination?

It does not. A Section 44 application undergoes the same substantive review as any domestic application, and the USPTO examiner will raise the same grounds for refusal, including likelihood of confusion with existing marks and descriptiveness, regardless of the foreign basis. The provision affects the filing basis and priority date, not the standards applied during examination.

Is Section 44 available to a U.S. company that also has a foreign trademark registration?

Section 44 is available only to applicants who qualify as a national of, are domiciled in, or have a real and effective industrial or commercial establishment in a country with a qualifying treaty relationship with the United States. A U.S.-based company without that connection to a foreign country cannot use this provision as its filing basis. U.S. companies seeking registration based on domestic use or intent to use must file under Section 1(a) or Section 1(b) instead.

How does Section 44 differ from Section 66(a) for foreign trademark applicants?

Section 44 is based on a direct national filing or registration in the applicant's home country, while Section 66(a) is based on an international registration obtained through the Madrid Protocol, a separate international system administered by WIPO. The two routes involve different procedural requirements, timelines, and fee structures, and the choice between them often depends on how many countries the applicant is seeking protection in and whether they are already using the Madrid system.