Foreign Filing Basis for U.S. Trademarks

If your business is based outside the United States, registering a trademark here can feel like a maze of statute numbers. The good news is that the U.S. system was built with treaty partners in mind. This guide explains, in plain English, what a filing basis is, the five options on the table, and the rules that trip up foreign applicants most often. It is general education, not legal advice.

What a “filing basis” actually means

A filing basis is the legal reason the USPTO has to register your mark. Think of it as the answer to the question: “Why are you entitled to a federal registration?” The Lanham Act — the federal trademark statute — recognizes a handful of acceptable answers, and your application has to pick at least one.

The basis you choose shapes everything that follows: what evidence you must submit, whether you need to show real-world use of the mark, how fast you can reach registration, and what you have to do later to keep the registration. You can even claim more than one basis for the same mark (for example, intent to use plus a foreign registration), with one exception we will get to: Section 66(a) cannot be combined with the others.

For a foundational walk-through of the U.S. process generally, see How to Trademark Your Business. This guide zooms in on the choices that matter to applicants with a foreign connection.

The U.S. filing bases at a glance

There are five filing bases. Two are open to everyone; three are designed for applicants with a foreign filing or registration to build on.

• Section 1(a) — use in commerce. You are already using the mark in U.S. commerce with the goods or services listed. You must submit a specimen showing real-world use and a date of first use.
• Section 1(b) — intent to use. You have a bona fide intention to use the mark in U.S. commerce in the near future but are not using it yet. You file now, then prove use later (with a Statement of Use) before registration issues.
• Section 44(d) — priority based on a foreign application. You own an earlier-filed foreign application and file your U.S. application within six months of it, for the same mark and the same goods or services. This lets you claim the foreign filing date as your effective U.S. filing date.
• Section 44(e) — based on a foreign registration. You own a registration of the same mark from your country of origin. You can register in the United States without first proving use here.
• Section 66(a) — Madrid Protocol extension. Your U.S. coverage comes through an international registration filed under the Madrid Protocol, with the United States named as a country where you want protection.

Sections 44 and 66(a) flow from international treaty obligations. The headline benefit for foreign applicants is that neither requires you to show use of the mark in the United States before the registration is granted — a meaningful head start over the domestic use-based route.

Section 44(d): the six-month priority claim

Section 44(d) is about timing, not about getting a registration on its own. If you have already filed a trademark application in a qualifying foreign country, you can carry that earlier filing date over to your U.S. application — provided you file in the United States within six months of the foreign filing date.

Why does the date matter so much? Because U.S. trademark rights, in a contest between applicants, often turn on who got there first. Claiming priority means that even if a competitor files in the United States after your foreign filing but before your U.S. filing, your earlier foreign date can put you ahead of them. The mark and the goods or services in the U.S. application have to match the foreign application for the priority claim to hold.

A few practical points. Section 44(d) by itself is a priority claim, not a complete basis for the registration to issue — you generally pair it with another basis (such as Section 44(e) once your foreign mark registers, or Section 1(a)/1(b)) so the application can move all the way to registration. And the six-month window is firm: miss it and the priority claim is gone, although you can still file on a different basis going forward.

Section 44(e): registering on a foreign registration

Section 44(e) lets a qualifying foreign applicant register a mark in the United States based on a registration the applicant already owns in its country of origin, for the same mark and the same goods or services.

The standout feature is what you do not have to do: you are not required to prove use of the mark in U.S. commerce before the registration issues. You must state a bona fide intention to use the mark in the United States, but actual use can come after registration. For a business expanding into the U.S. market, that can shave significant time and uncertainty off the process compared with a use-based filing.

There are guardrails. The foreign registration generally must come from your “country of origin” — a country where you have a real and effective business presence, or of which you are a national or domiciliary. Your U.S. application also can’t claim broader goods or services than your foreign registration covers. And while use isn’t needed before registration, it does not disappear as a requirement — it simply shifts to the maintenance stage, which we cover below.

Section 66(a): the Madrid Protocol route

Section 66(a) is the basis for marks that reach the United States through the Madrid Protocol, an international treaty system administered by the World Intellectual Property Organization (WIPO). Instead of filing directly at the USPTO, you file one international application through your home trademark office, designate the United States (and any other member countries you want), and WIPO forwards a “request for extension of protection” to each.

When the United States is designated, the USPTO examines that request much like a national application, and if it passes, it issues a U.S. registration tied to your international registration. Like Section 44(e), a Section 66(a) application does not require proof of use before registration.

Two quirks set Section 66(a) apart. First, it cannot be combined with any other filing basis, and you cannot later amend a Section 66(a) application into a Section 1 or Section 44 application. Second, the U.S. registration stays linked to the underlying international registration for five years; if the home registration falls (so-called “central attack”), the U.S. extension can fall with it, though the Madrid system allows transformation into a national application in that situation. For the full mechanics, see our Madrid Protocol guide.

The catch: use is still required to maintain

Here is the rule that surprises many foreign registrants. Sections 44(e) and 66(a) excuse you from proving use before registration — but U.S. trademark rights ultimately depend on actually using the mark in commerce. The use requirement is not waived; it is postponed.

After your registration issues, you must file maintenance documents on a fixed schedule to keep it alive, and those filings require a declaration (with a specimen) that the mark is in use in U.S. commerce. The first checkpoint comes between the fifth and sixth years after registration, with renewals roughly every ten years thereafter. A registration that was never put to genuine use — or that you can’t back up with a proper specimen — is vulnerable to cancellation and to challenges from competitors. In other words, a Section 44 or 66(a) registration buys you time to enter the market, but not a permanent pass on use.

We break down those deadlines in Section 8 and Section 9 renewals. Plan for use from day one, even if you register before you sell.

The bottom line

A filing basis is the legal foundation of every U.S. trademark application. Domestic applicants lean on Section 1(a) use or Section 1(b) intent to use. Foreign applicants gain three additional paths: Section 44(d) to claim a six-month priority from a home-country application, Section 44(e) to register on the strength of a foreign registration, and Section 66(a) to extend a Madrid Protocol international registration into the United States. The treaty-based routes let you reach registration without first proving use here — a real advantage — but they never erase the use requirement. To keep your registration, you will need genuine use of the mark in U.S. commerce.

For the wider picture, start with our International IP pillar and browse more trademark explainers in /topics/trademarks/.

This article is general educational information about U.S. trademark law and is not legal advice. It does not create an attorney-client relationship and does not imply licensure in any particular state. Trademark rules and deadlines change, and the right strategy depends on your specific facts. For guidance on your situation, consult an attorney licensed in your jurisdiction.