Precedential No. 11: TTAB Awards Section 44(d) Priority to Domiciliary of British Virgin Islands Based on Reciprocity, Grants Summary Judgment Motion Contingent on Ultimate Registration

In this opposition to registration of the mark CANDYVERSE for confectionary products, the parties filed cross-motions for summary judgment on the only contested issue: priority. Applicant Zeeth Ltd., a British Virgin Islands company, relied on the filing date of its European Union application as the basis for its Section 44(d) priority claim. The dispute boiled down to whether the British Virgin Islands, a self-governing British overseas territory, “extends reciprocal rights to nationals of the United States by law[.]” CandyVerse, LLC v. Zeeth Ltd., Opposition No. 91289595 (November 24, 2025) [precedential].

Section 44(d) of the Lanham Act allows an applicant to rely on the filing date of its application in a foreign country as its date of constructive use under certain circumstances. Under Sections 44(b) and (d), to receive a priority filing date, the following requirements must be met:

1. the application in the United States must be filed within six months from the filing date of the first-filed foreign application; 
2. the application must include a verified statement that the applicant has a bona fide intent to use the mark in commerce; and 
3. the applicant’s country of origin and the country where the foreign application was filed must (a) be party to an international treaty or agreement with the United States that provides a right of priority or (b) extend reciprocal rights to priority to U.S. nationals.

Applicant Zeeth filed its U.S. application within six months of its EU filing date, it included a verified statement of bona fide intent, and the EU and USA are parties to the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights of 1994. However, the parties disputed whether Zeeth is eligible to claim priority, and particularly whether Applicant Zeeth’s country of origin is party to an international treaty or agreement with the United States or extends reciprocal rights to priority to U.S. nationals.

Zeeth conceded that the British Virgin Islands is not a party to a relevant treaty or agreement with the United States, but it argued that the Virgin Islands Trade Marks Act (“VITMA”) extends reciprocal priority rights to U.S. nationals and thus enables Zeeth to enjoy a right to priority under Section 44(d).

Although a British overseas territory, the British Virgin Islands is Applicant’s country of origin because the British Virgin Islands is internally self-governing and Applicant is organized under the laws thereof. * * * Ultimately, the parties’ dispute boils down to whether the British Virgin Islands “extends reciprocal rights to nationals of the United States by law[.]”

The Board observed that "[w]hether a foreign nation extends reciprocal rights of priority to U.S. nationals pursuant to Section 44(b) is an issue of first impression." Zeeth is "entitled to the benefits of Section 44 if the British Virgin Islands extends to U.S. nationals the same opportunity to claim a priority date based on a foreign-filed application." Reviewing the VITMA, the Board concluded that it does.

In summary, the VITMA affords any person seeking a registration in the British Virgin Islands the right to claim a priority date based on its first application filed in a country that is party to the Paris Convention or a WTO member if the person files in the British Virgin Islands within six months of such an application. Because the law does not set forth a limit with respect to a person’s country of origin, it affords U.S. nationals who satisfy its other requirements the opportunity to assert a priority right.

And so, the Board concluded that "[b]ecause the British Virgin Islands extends a reciprocal priority right to U.S. nationals, Applicant is entitled to the priority date under Trademark Act Section 44(d) based on its European Union application," and it granted Zeeth's motion for summary judgment, contingent upon Zeeth's establishment of constructive use - i.e., subject to the issuance of a registration to Zeeth. See Sections 7(c) and 44(c) of the Lanham Act.

The Board also noted that, “[t]o obtain a priority filing date under §44(d), the foreign application does not have to be filed in the applicant’s country of origin. However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which the applicant relies for priority, the applicant must establish that the country in which the application was filed is its country of origin.” And so, Zeeth was able to establish a priority date under Section 44(d) but it cannot rely on Section 44(e) as the basis for registration. It will have to establish actual use in commerce.

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TTABlogger comment: A good discussion of Section 44 law. Also, confirming my frequent rant, the Board pointed out that "the TMEP does not have the force and effect of law." See W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1127 n.8 (Fed. Cir. 1994); see also In re Pennington Seed, Inc., 466 F.3d 1053, 1059 (Fed. Cir. 2006). Nonetheless, the Board cites the TMEP in footnote 6.

Hat-tip to FOBs Scott Alprin and Brian Taddonio.

Text Copyright John L. Welch 2025.