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How a Foreign Trademark Application or Registration Can Help You in the United States
A foreign trademark registration (and even a pending application) can materially strengthen and accelerate U.S. trademark strategy, not just for foreign businesses, but also for American ones that for one reason or another first filed for trademark protection abroad.
For example, a European biotech company files for trademark protection in the EU on March 1st for a new drug brand. Clinical trials will take 18 months before U.S. market entry is possible. Without a foreign filing strategy, a competitor could file in the U.S. during that gap and block the brand. But by filing a U.S. application within six months of the EU filing and later converting to a registration basis once the EU mark registers, the company can secure its U.S. priority date now and complete registration before ever making a U.S. sale.
Used correctly, a foreign filing can let you claim an earlier priority date in the United States and, with a qualifying foreign registration, obtain a U.S. registration without proving U.S. use before the mark registers.
This strategy is most useful when you plan to launch in the U.S. later, when regulatory approvals or compliance steps delay U.S. sales, when distribution or manufacturing timelines make early U.S. use unrealistic, or when you need to defend a brand against copycats while you build the market. In those situations, a well-timed foreign filing can preserve priority and, in the right case, allow U.S. registration before U.S. use.
Section 44(d): Claiming Foreign Priority in the U.S.
Section 44(d) of the U.S. Trademark Act can give you an earlier priority date in the United States, but it does not, by itself, get you a U.S. registration. To actually register, you still need a separate registration basis, which usually means either your foreign application later becomes a foreign registration so you can amend to Section 44(e), or you begin using the mark in U.S. commerce and amend to a Section 1(a) use based filing.
Say you file an EU trademark application on January 1, 2026. An unrelated party then files an application to register the same mark in the United States on January 15. By availing yourself of Section 44(d), you can claim priority over that January 15 application in the United States.
Employing Section 44(d) can be decisive in priority disputes, blocking later-filed U.S. applications, and avoiding intervening filings by competitors.
Key limitations
- The priority claim applies only to the same mark and the same goods and services as in the foreign application (read on for more on this).
- Section 44(d) gives you priority, but there must be a valid basis for registration.
Section 44(e): Registering in the U.S. Based on a Foreign Registration
Section 44(e) allows a foreign applicant to obtain a U.S. registration based on an existing foreign registration, without showing use in U.S. commerce at the time of registration. While 44(e) can complement a 44(d), it can also be invoked independently.
For example, taking the example above, say that you decide to seek U.S. protection on August 1. By that point, more than six months have elapsed since the EU application, meaning the U.S. application cannot be filed on a 44(d) basis (and that priority on the basis of the EU application cannot be claimed).
However, if by that date the trademark has been registered in the EU, you can file on a 44(e) basis. While this will not provide any advantages versus any earlier filings, it can still be of immense help, by eliminating the requirement to use the trademark in the United States before it can be registered.
This can be particularly valuable for companies that are expanding into the U.S. market, want protection before launch, or face regulatory or logistical barriers to early U.S. use.
NOTE: While use of the trademark is not required to complete the registration, going forward the use requirements will be the same as for other U.S. registrations. This means that a Declaration of Use must be filed (accompanied by proof of use) between the fifth and sixth anniversaries of registration, and then to renew the registration between the tenth and eleventh anniversaries of registration (and every 10 years henceforth).
The Goods & Services Problem (Where Things Get Painful)
Here is where many otherwise solid applications go off the rails.
The USPTO requires highly specific, USPTO-compliant identifications of goods and services. Many foreign trademark systems do not, instead allowing broad class headings, or more general descriptions than those allowed in the United States.
For example, "computer software" is a perfectly acceptable identification in many countries, but it is not in the United States, where an acceptable identification would be "downloadable credit screening software" or "recorded speech recognition software".
Converting foreign goods and services into USPTO-compliant language can be surprisingly complex and deeply frustrating. This is one of those areas that looks easy—until it isn't.
Also, as a practical matter, if you want to include additional goods and services to those included in the foreign application/registration, 44(d)/(e) won't work. The only way to expand the scope on the U.S. application is to file under a regular basis (actual use (1(a)) or intent-to-use (1(b)).
Other Potential Hitches
It must also be noted that, to avail yourself of 44(d) and 44(e), the U.S. applicant must be the same party that owns the foreign application or registration. This can be an issue if you want ownership of the U.S. trademark to belong an affiliate or subsidiary. In these cases, one option is to keep the same owners during the registration process and then assign the U.S. registration to the desired owner.
Moreover, the mark must be the same. This can be an issue for brands that have refreshed their logo since the time of the foreign filing. In these situations, it might make sense to explore whether an amendment of the foreign record is possible and/or filing a new foreign application before filing the U.S. application.
Documentation and Translation: More Than Just the Certificate
A Section 44(e) application requires submission of a copy of the foreign registration. Foreign registrations that aren't in English must be translated.
Critically, the goods and services must also be translated, even if they do not appear on the face of the registration certificate. This may require translation of a separate document, such as the entry in the relevant country's trademark database.
PRO TIP: If you're a fellow practitioner, note that dates on foreign registration certificates may reflect different calendars, such as the Islamic calendar or the Republic of China calendar used in Taiwan. These dates must be converted to the Gregorian calendar when providing dates to the USPTO.
A Note on Section 66(a) (Madrid Protocol)
The Madrid Protocol (Section 66(a)) also allows foreign registrations to extend to the U.S., but it operates under a different procedural framework and comes with its own risks and constraints.
For more information, see our earlier post, International Trademark Registration: A Step-by-Step Guide to the Madrid System (2025).
Bottom Line
A foreign trademark application or registration can be a powerful asset in securing U.S. trademark rights—but only if it is used strategically and executed correctly.
Sections 44(d) and 44(e) offer real advantages, but they also demand careful handling, especially when it comes to goods and services and supporting documentation. What looks like administrative detail can quickly become the most difficult—and costly—part of the process.
If you're relying on a foreign filing to support a U.S. trademark application, it pays to get it right the first time.
FAQ: Using Foreign Trademark Filings to Strengthen a U.S. Application
What is the difference between Section 44(d) and Section 44(e)?
Section 44(d) lets you claim an earlier priority date in the United States based on a foreign application filed within the last six months. Section 44(e) is a separate basis for registration that relies on an existing foreign registration and can allow a U.S. registration without proving U.S. use at the time the U.S. registration issues.
Do I need a foreign registration to use 44(d)?
No. A 44(d) filing is based on the foreign application, not a foreign registration. But 44(d) alone is not enough to get you to registration. In most cases you later amend to 44(e) once the foreign registration issues, or you amend to Section 1(a) after you begin using the mark in U.S. commerce.
What happens if I miss the six month deadline for 44(d)?
You cannot claim priority back to the foreign filing date under 44(d). You may still be able to file on a 44(e) basis if the foreign registration has already issued, or you can file under the usual U.S. bases such as 1(b) intent to use.
Can a U.S. company use Section 44?
Yes. Section 44 is not limited to foreign companies. A U.S. applicant can use 44(d) or 44(e) if it owns a qualifying foreign application or registration and meets the applicable treaty based requirements.
Can I broaden my U.S. goods and services beyond the foreign filing?
Not if you want to rely on 44(d) or 44(e) for those additional items. The U.S. application has to track the goods and services covered by the foreign application or registration. If you need broader coverage, you typically file the additional goods and services under 1(a) or 1(b), often in a separate U.S. application.
Why does the USPTO reject my goods and services when the foreign office accepted them?
Because the USPTO requires more specific and tightly worded identifications than many foreign trademark offices. Broad terms and class headings that are acceptable abroad often draw objections in the United States. "Computer software" is a common example that is usually too vague for the USPTO without more detail.
If I get a U.S. registration under 44(e), do I ever have to use the mark in the U.S.?
Yes. You can obtain the registration without proving U.S. use at the time of registration, but you still must maintain the registration through the normal U.S. use based maintenance filings, including a Declaration of Use between the fifth and sixth years after registration and renewal filings at the tenth year and every ten years after that.
Does 44(d) protect me against someone using the mark in the U.S. before I start using it?
It can be very helpful in USPTO priority disputes because it can give you an earlier effective filing date. But it is not a complete shield against every real world conflict. Depending on the facts, actual market use and other legal doctrines can still matter. If there is a serious conflict, this is the point where you should get advice quickly.
Can the U.S. applicant be a different entity than the foreign applicant?
Usually no. To rely on 44(d) or 44(e), the U.S. applicant generally needs to be the same party that owns the foreign application or registration. If you ultimately want a different affiliate to own the U.S. rights, one common approach is to keep ownership aligned through the application and registration process and then record a post registration assignment, taking care not to create chain of title issues.
Can I use 44(d) or 44(e) if my logo changed after the foreign filing?
Only if the mark is materially the same. Small, non substantive updates may be acceptable, but meaningful redesigns usually are not. If the branding has shifted, the clean solution is often filing a new application for the updated mark rather than trying to force fit the old one.
What documents do I actually need for 44(e)?
You will need a copy of the foreign registration and, if it is not in English, an English translation. In many cases you also need a translation or copy of the foreign register entry showing the goods and services, because the certificate alone may not include a complete identification.
How is Section 66(a) different from filing directly under 44(e)?
Section 66(a) is the Madrid Protocol route, where you extend an international registration to the United States rather than filing a direct U.S. application. It can be efficient for multi country protection, but it comes with its own procedural rules and can be less flexible for certain changes or corrections. It is not automatically better or easier, it is simply a different system with different tradeoffs.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
