Trademark registrations at the federal level in the U.S. are processed and administered by the U.S. Patent and Trademark Office (“USPTO”). Mostly, the USPTO is for domestic persons and corporate entities who want to register domestic trademarks. However, the USPTO is also the agency responsible for registering international trademarks owned or held by persons/companies seeking to use their trademarks in the United States. The process of registering foreign-registered trademarks is simplified by U.S. trademarks and by international treaties. There are actually two categories for foreign trademarks. In this article, the experienced Michigan trademark attorneys at Revision Legal discuss registration under § 66(a).

Section 66(a) applicants can use the standard applications form. However, under the question of which “basis” is being used, the applicants should check the box for Section 66(a). Section 66(a) applications are for those that already have a registration for the foreign trademark through the World Intellectual Property Organization (“WIPO”), which is located in Geneva, Switzerland. Technically, a Section 66(a) application is a “request to extend protection” of the foreign registered trademark to the U.S. A request to extend protection can also be filed through the International Bureau of WIPO (in which case the International Bureau will transmit the request to the USPTO).

A Section 66(a) application must meet the legal requirements for registration of a trademark in the U.S. and will be examined by the USPTO in the same manner as other applications. A Section 66(a) application is also subject to the standard publication rules in the Official Gazette and can be challenged in an opposition proceeding before the Trademark Trial and Appeal Board.

The key exception to the standard requirements is that the international trademarks under do not have to be currently used in the U.S. However, the application must state a legitimate intent to use the trademark in U.S. interstate commerce. Within a couple of years, the applicant will need to file Use Affidavits or Excusable Nonuse Affidavits with the USPTO to maintain the registered extension of protection. Registered Section 66(a) trademarks are placed on the Principal Registry.

There are some well-known common problems that Section 66(a) applications face. These problems are generally a function of the differences in how trademarks are registered and used in different countries around the world. One common problem relates to the trademark Class and subclasses chosen for association with the trademark. In the U.S., trademarks must be associated with certain trademark Classes, like Class 016 for paper goods. Further, the trademark must be used with each Class. This is not the case in many other countries. As a consequence, a Section 66(a) application might list many Classes, but the trademark might only be used with a small number of the Classes identified. Identification of too many Classes can cause rejection by the USPTO and can cause significant problems with maintaining a Section 66(a) registration. Some other common problems include:

• Failure to accurately and fully describe a design trademark
• Language uncertainties — for example, how does the word or character function as a trademark?
• Uncertainty with respect to the type of entity of the applicant — relates to how corporate entities are different from country to country
• Improper disclaimers

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Section 66(a) vs. Section 44(e): Understanding Both Pathways for Foreign Trademark Holders

There are two primary pathways for foreign trademark holders to register their marks in the United States. Section 44(e) of the Lanham Act allows a foreign trademark owner who has obtained a registration in their home country to file a U.S. trademark application based on that foreign registration, without needing to show prior use in U.S. commerce. Section 66(a), by contrast, applies specifically to international registrations obtained through the Madrid Protocol system administered by WIPO.

The key distinction is the starting point: a Section 44(e) applicant must have a home-country registration specifically, while a Section 66(a) applicant must have an international registration through WIPO’s International Bureau (IB). Section 66(a) applications are filed through the IB using WIPO’s MM18 form, which transmits the request to the USPTO for examination. Section 44(e) applications are filed directly with the USPTO. Both pathways eventually result in a U.S. registration on the Principal Register, but the procedural routes and ongoing maintenance obligations differ in important ways.

Central Attack: A Unique Risk for Section 66(a) Registrations

One of the most significant risks unique to Section 66(a) registrations is exposure to “central attack.” Unlike a standard U.S. application that stands entirely on its own once filed, a Section 66(a) application and resulting U.S. registration remain dependent on the underlying international registration for the first five years after the international registration date. If the international registration is cancelled — for any reason, including cancellation of the underlying home-country registration through a successful opposition or court proceeding — the U.S. registration is automatically cancelled along with it. This is called central attack because a competitor can attack the home-country mark and, if successful, destroy the U.S. protection in a single blow.

After the five-year dependency period expires, the U.S. registration becomes independent of the international registration. At that point, central attack is no longer a vulnerability. Section 66(a) registrants and their attorneys should carefully monitor the status of the underlying international registration during this five-year window and take steps to defend the home-country registration against any threatened cancellation or opposition proceedings.

Identifying and Correcting Common Section 66(a) Application Defects

As noted in the original content, Section 66(a) applications frequently encounter problems arising from differences between the U.S. trademark system and trademark regimes in other countries. The most actionable steps a Section 66(a) applicant can take to avoid rejection include:

• Narrowing the identification of goods and services — the USPTO requires a specific, definite identification of goods and services; the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) contains thousands of pre-approved identifications that are easiest to work with; broad or vague descriptions from the international registration must be revised to conform to U.S. standards
• Removing classes not in use in the U.S. — the USPTO will require evidence of use (or excusable nonuse) in each class identified; applicants whose international registrations cover many classes should evaluate which classes are genuinely needed in the U.S. market and consider limiting the Section 66(a) request accordingly
• Providing a complete description of design marks — the USPTO requires that design marks include a written description of the design elements; descriptions that are adequate in other countries often fall short of the USPTO’s requirements
• Clarifying entity type — U.S. trademark law requires applicants to identify their legal entity type using U.S. legal categories; foreign corporate forms (GmbH, SAS, KK, etc.) must be translated into the nearest U.S. equivalent and the jurisdiction of formation must be stated

Post-Registration Maintenance for Section 66(a) Marks

Maintaining a Section 66(a) registration in the United States requires compliance with both USPTO filing deadlines and international bureau requirements. On the USPTO side, registrants must file a Declaration of Use (Section 8 Affidavit) between the 5th and 6th year after registration, and again between the 9th and 10th year (with a combined Section 8 and 15 filing available at the 10-year mark). These declarations must be accompanied by a specimen showing current use of the mark in U.S. commerce in connection with each class of goods or services for which the registration is maintained.

The timing complexity for Section 66(a) marks is real: the five-year dependency period is measured from the international registration date, not the U.S. registration date, which means these two dates can differ. Section 66(a) holders should work with a U.S. trademark attorney to map out all maintenance deadlines from the outset to avoid inadvertent lapses in registration.

Contact the Trademark Attorneys at Revision Legal

International trademark matters — whether entering the U.S. market through Section 66(a) or Section 44(e), defending against central attack, or maintaining the U.S. registration long-term — require experienced legal guidance. The trademark attorneys at Revision Legal advise foreign trademark holders on U.S. registration strategy, handle USPTO examination proceedings, and manage ongoing maintenance obligations. Contact us through the form on this page or call (855) 473-8474.