As part of reporting the filing of a new U.S. trademark application, we here at Danielson Legal always include a reminder to clients about filing applications in foreign countries. Under a particular treaty that the U.S. is a signatory to (the “Paris Convention,” for those of you taking notes), foreign applications for the same mark, which are filed in other treaty member nations within six months of the first filing, can claim “priority” to the U.S. application’s filing date. By way of example, if I file a U.S. application on January 1 and then file an application for the same mark in China on May 1 and claim priority, the Chinese application will have a constructive filing date of January 1.
This is important because unlike in the U.S., trademark rights in most other countries are based on “first to file,” not “first to use.” In the example above, suppose that a third party applied to register the identical mark as me in China, for the same goods/services, and that the other application was filed on March 1. Who has senior rights? That depends – if my Chinese application claims Paris Convention priority, my Chinese filing date is considered to be January 1, and I win. If no priority is claimed, and my filing date is thus considered my actual May 1 filing date … not so much. This example demonstrates why developing a trademark strategy early is essential for any company, even one not currently doing business abroad. On the topic of developing a strategy for the future and not merely the present … well, stay tuned.