In most countries around the world, trademark applications are public record once filed. United States federal trademark applications and registrations are searchable on the Trademark Electronic Search Systems (TESS). In fact, anyone in the world can access the TESS database. Moreover, the TESS database is a great tool for determining trademark availability. However, while in most countries, trademarks are publicly searchable, a limited number of countries do not publish applications in a searchable online database. For example, if you file a trademark in Jamaica, you must physically go to the Jamaican trademark office to search. Thus, Jamaican trademark applications are essentially secret.

As you can imagine, having an application published in a searchable database may be problematic for some companies. Specifically, companies who are constantly being monitored by competitors or scrutinized by the media may want to keep their trademark filings under wraps. For example, TESLA may not want to publicize their next car model before they have marketing ready to go.

Thus, companies such as TESLA and APPLE have been using foreign priority rights to keep their trademark filings secret. In particular, Section 44(d) of the Trademark Act allows applicants to claim priority to a prior-filed foreign application. To claim priority under §44(d), the U.S. filing must be done within 6-months of filing the foreign application. Accordingly, by filing a trademark application first in a country like Jamaica, companies can effectively gain 6-months of secrecy.

DISNEY’s Recent 44(d) Application

For example, DISNEY recently filed a trademark application for DISNEY PIXAR LUCA in the United States, claiming priority to a prior-filed Jamaican application. By filing their U.S. application within 6-months of their Jamaican application, Disney was able to keep its application under wraps. Thus, DISNEY can claim an earlier priority date in the United States.

What is Section 44(d)?

Section 44(d) of the Trademark Act allows applicants to claim priority to foreign applications filed within 6-months of their U.S. trademark applications.