Section 44: A Quick Guide for Foreign Trademark Owners
Foreign brand owners often ask whether they can secure a United States trademark registration before they begin selling products or services in the US marketplace. The short answer is yes—if you qualify under Section 44 of the Lanham Act. Section 44 implements the United States’ obligations under international agreements such as the Paris Convention and related treaties. It creates two distinct—but complementary—routes to the USPTO principal register: Section 44(d), which lets you claim a US priority filing date based on a foreign application, and Section 44(e), which allows you to obtain a US registration based on an existing foreign registration. Used strategically, Section 44 can lock in priority early and even deliver a US registration without submitting proof of US use before registration, while still preserving the flexibility to rely on nationwide use later. This blog article explains how each provision works, who qualifies, how to file correctly, and why post-registration use is still critical to maintain and enforce your trademark rights.
The Two Pathways: Priority Under Section 44(d) and Registration Under Section 44(e)
Section 44(d) functions as a trademark priority mechanism. If you file in the United States within six months of your first regularly filed foreign trademark application for the same trademark and goods or services, the USPTO will treat your US federal trademark application as if it were filed on the foreign filing date. That earlier “constructive” date can be decisive when another applicant files in the interim or when the USPTO is determining which of two similar trademarks has priority for publication. It is important to recognize what Section 44(d) is not: it is not, by itself, a basis for publication or trademark registration. Rather, it is a legal device that secures your place in line. To proceed to approval and registration after you claim priority, you must establish a registration basis—either by perfecting Section 44(e) once your foreign trademark registration issues, or by relying on Section 1(a) (actual use in U.S. commerce) or Section 1(b) (intent-to-use) in the same application.
Section 44(e) provides the substantive registration basis that allows foreign applicants to register in the United States without proving nationwide use as a prerequisite to registration. If you own a valid trademark registration for the same trademark in your country of origin, and that country is connected to the United States through the Paris Convention or another qualifying agreement (or provides reciprocal rights), you may rely on that home-country registration to obtain a US trademark registration. You still must declare a bona fide intention to use the trademark in US commerce, but you are not required to submit US specimens or dates of use before the USPTO issues the trademark registration. For companies planning a staged market entry, Section 44(e) can secure the trademark registration now while product rollout, distribution, and marketing ramp up.
Fairness on §44(e)’s No Specimens Before Registration Rule
Section 44(e) reflects treaty reciprocity, not a free pass. It lets qualified foreign owners secure a US trademark registration based on a home-country registration while they prepare a staged market entry—but it also builds in safeguards so domestic applicants aren’t disadvantaged. First, the trademark applicant must genuinely intend to use the trademark in US commerce and must already own a valid registration from a true country of origin; the US identification can’t exceed what’s protected abroad, so there’s no leapfrogging with broader US trademark rights. Second, §44(e) never overrides US registrability standards—USPTO examining attorneys still refuse on descriptiveness, likelihood of confusion, and other trademark refusals, just as they would for a US filer. Third, the “no use before registration” head start is temporary: the owner must later prove use to keep the registration (Section 8/9 maintenance), and today’s TMA expungement and reexamination tools allow dead-weight goods and never-used claims to be pruned quickly. In practice, that means §44(e) harmonizes timing across borders so global launch plans aren’t penalized, while the marketplace fairness you care about—actual use and truthful coverage—remains the ultimate check on the scope and durability of the rights granted.
Eligibility and the Meaning of “Country of Origin”
Eligibility under Section 44 depends on your connection to a qualifying country and, for Section 44(e), ownership of a home-country registration. “Country of origin” is defined functionally. It is the country in which you have a bona fide and effective industrial or commercial establishment; if not that, the country of your domicile; and if not that, the country of which you are a national. Because this definition is tiered and pragmatic, many companies can claim more than one country of origin, but for Section 44(e) you must tie your US application to a registration from one of those countries of origin.
In practice, the USPTO accepts a simple written statement to establish country-of-origin status when the facts are not obvious from the record. For a Section 44(d) priority claim, the relevant timing is the six-month priority window that runs from the date of the foreign filing; for Section 44(e), the relevant point is the date the foreign registration issued. If the record contradicts an applicant’s assertion—say, it suggests there is no real establishment or that the registration is from a country with no qualifying treaty—the examiner may ask for more detail, such as the presence of production facilities, business offices, personnel, or other indicators that commercial activity is genuinely rooted in the claimed country.
US-domiciled trademark applicants can also make use of Section 44, but with limits. A US company may claim Section 44(d) priority based on a qualifying foreign application filed anywhere that meets the treaty or reciprocity requirements, even if that country is not the US company’s country of origin. However, a US company cannot register under Section 44(e) unless it owns a foreign registration from a country that is independently its country of origin under the statute. This distinction matters: trademark priority is portable, but trademark registration without US use requires a home-country registration and matching country-of-origin entitlement.
How Section 44(d) Works Day-to-Day
To leverage Section 44(d), file your USPTO trademark application within six months of your first filed foreign application and identify that foreign filing accurately. The US identification cannot exceed the scope of the foreign application for any goods or services you want covered by the priority claim. If multiple foreign applications were filed for the same trademark at different times covering different goods or services, it is possible to claim priority for different items from different first-filed foreign trademark applications, so long as each claim meets the timing and “first-filed” rules.
Priority is a powerful tool in examination and at publication. For example, suppose a French company files its first application in Canada for ALPINE for backpacks in January and files in the United States in June claiming Section 44(d) priority. If a competitor files a US application for ALPINE for bags in March, the French applicant’s June filing can still outrank the competitor because the French applicant’s effective US filing date is January. The nuance to remember is that Section 44(d) does not excuse you from securing a registration basis; it simply holds your place while you either perfect Section 44(e) when your home-country registration issues, or proceed under Section 1(a) or 1(b).
How Section 44(e) Gets You a U.S. Registration Without Pre-Registration U.S. Use
Section 44(e) is a gateway to trademark registration based on an existing foreign registration from your country of origin. The US filing must include a copy of that home-country registration and, if the document is not in English, a translation. The USPTO will expect the foreign registration to remain in force through the US trademark registration date; if the foreign trademark registration is close to expiration, the examiner can request proof of renewal. The identification of goods and services in your U.S. application cannot exceed the scope of the foreign registration. Once those conditions are satisfied and any other US-law issues are cleared (such as descriptiveness, likelihood of confusion, or other Section 2 bars), the trademark application can proceed to registration without US specimens or an allegation of use.
A helpful way to visualize the difference between 44(d) and 44(e) is to think of 44(d) as the speed pass to the front of the line and 44(e) as the ticket that actually gets you in the door. Many foreign applicants use both provisions in sequence: they file in the US quickly to claim priority under 44(d), then a few months later, once the home-country registration is granted, they perfect the US case under 44(e) and move to registration without delaying launch plans to gather US specimens.
Multiple Bases in a Single Application and When to Use Them
It is common and often smart to claim more than one filing basis in the same US application. A foreign owner might begin with Section 44(d) for priority, add Section 44(e) later for registration without US use, and also include Section 1(b) for goods or services that appear in the US trademark identification but not in the foreign registration. This hybrid approach allows the parts that qualify under 44(e) to register promptly, while the additional items move forward on the intent-to-use track and can be registered later by submitting acceptable US specimens. This avoids over-broadening the Section 44(e) basis beyond the foreign registration while keeping long-term US plans intact.
There are also scenarios where a foreign trademark registration issues quickly—in jurisdictions that do not examine on relative grounds, for example—and the applicant files in the US under both 44(d) and 44(e) from the start. In other cases, particularly where a foreign application may take longer to mature, it can be pragmatic to proceed under Section 1(b) for the US filing while preserving 44(d) priority and later switching to 44(e) when the foreign registration arrives. Timing, product rollout, and the scope of the foreign registration all inform the best sequencing.
Common Pitfalls That Delay or Derail Section 44 Filings
The most frequent problem with Section 44(d) is missing the six-month window or relying on a foreign filing that is not actually the first application anywhere for the same goods or services. The USPTO presumes that the identified foreign application is first-filed unless the record shows otherwise, but if evidence surfaces that an earlier filing exists in a different treaty country for overlapping goods, priority for those goods can be denied. Another issue arises when the US goods and/or services identification quietly expands beyond the foreign application (for 44(d)) or beyond the foreign registration (for 44(e)); the USPTO will require you to trim the US goods and/or services identification or shift those extra items to a Section 1 basis.
Applicants also run into trouble with proof. A Section 44(e) filing requires an acceptable copy of the foreign registration and, if applicable, a translation signed by the translator. Database printouts that are not certified can be rejected, and missing renewal evidence for registrations near expiry can stall examination. Finally, ownership must align. If the US applicant was not the owner of the foreign application or registration on the relevant US filing or amendment date, the 44 basis can fail. When ownership changed hands, including a short chain-of-title explanation or an official registry printout prevents avoidable delays.
Why Post-Registration Use Still Matters
Registering without US trademark use in commerce is not the end of the story; it is the beginning. Trademark law expects registered trademarks to be used in commerce, and it provides multiple mechanisms to test that expectation. Between the fifth and sixth anniversary of registration, an owner must file a Section 8 declaration of use (or explain excusable nonuse) to keep the registration alive, and then file combined maintenance and renewal documents every ten years. In addition, the Trademark Modernization Act created expungement and reexamination procedures that allow third parties—or the USPTO Director—to target goods and services that have never been used in commerce or were not in use as of the relevant claim dates. These proceedings are streamlined and can delete dead weight from a registration. From a business standpoint, consistent US use is also what strengthens your position in enforcement and licensing. Courts and counterparties look at what consumers actually see in the marketplace. A registration obtained through 44(e) is a strong asset, but building marketplace recognition through use is what converts that asset into durable brand value.
Practical Example
Consider a company organized in Germany that manufactures kitchen appliances under the mark BLAUFIRE. It files first in the European Union for “electric blenders; toasters; coffee grinders” in January. In June, it files in the United States claiming Section 44(d) priority and, at the same time, includes Section 1(b) as an alternative basis for a broader identification that also lists “food processors.” In September, the EU registration issues. The applicant then perfects its US case under Section 44(e) for the items that appear in the EU registration—blenders, toasters, and coffee grinders—while leaving “food processors” to proceed under intent-to-use. The US application advances to registration for the three EU-covered items without U.S. specimens, preserving the company’s planned fall launch. The remaining goods register later when the company submits acceptable specimens after it begins US sales. This sequencing captures early priority, leverages 44(e) to register without pre-registration US use, and still protects expansion plans.
Putting It All Together: A Strategy You Can Use
The most effective approach usually begins with a candid assessment of timing and scope. If your home-country trademark application is already filed, preserve your ability to outrank later filers by submitting a US trademark application within six months and claiming Section 44(d) priority. If your home-country registration will issue soon, plan to perfect under Section 44(e) so the US application can register without US specimens. If your US business plan includes goods or services that do not appear in the home-country registration, keep the application flexible by adding Section 1(b) for those items. Throughout, make sure your US identification mirrors the wording and scope of your foreign application or registration for the portions that will rely on Section 44, and keep ownership records tidy so there is no gap between the foreign right and the US applicant. Once registered, calendar maintenance deadlines and build steady, documentary evidence of US use—packaging, website captures, invoices, distributor listings—so your registration withstands later audits, expungement petitions, and licensing or enforcement scrutiny.
Final Takeaways for Foreign Brand Owners
Section 44 is a powerful toolset. Section 44(d) secures a US priority filing date linked to your first foreign filing, protecting your place in line. Section 44(e) allows you to obtain a US registration based on your country-of-origin registration without first proving US use. Together, they let you plan rationally: capture early priority, register promptly, and then build US market presence on your schedule. The legal details matter—the six-month window for priority, the first-filed requirement, the match between identifications, the proof of country of origin, the correct form of foreign registration copies and translations, and the alignment of ownership. But when those details are handled well, Section 44 becomes a straightforward pathway from a foreign filing to a US registration. And once the certificate is in hand, consistent US use is what keeps your registration strong, protects it from nonuse challenges, and gives you the leverage you need to expand, license, and enforce your brand in the world’s largest consumer market.
