Trademark Law Alert--Cross-Border Trademark Priority
The Trademark Trial and Appeal Board (TTAB), in a precedential decision of first impression, decided that a British Virgin Islands (BVI) company, applying in the U.S. to register CANDYVERSE for soft drinks and retail store services, could base its priority on its EU trademark application to defeat an opposition by a user of the same mark in the U.S.
This decision is instructive about the relevant requirements of U.S. law.
Zeeth Ltd. (Applicant), a BVI company, filed its U.S. application on May 27, 2022. It claimed a priority date of December 2, 2021, the filing date of its pending European Union Trademark (EUTM) application.
CandyVerse, LLC (Opposer), a Texas company, opposed. It had used the identical word mark in U.S. commerce for goods and services that included beverages and retail store services since at least as early as March 4, 2022.
Opposer claimed that Applicant’s later U.S. filing date is the only applicable priority date, rather Applicant’s earlier EUTM filing date.
Both parties moved for summary judgment.
The Law
To receive a registration based on the priority of a foreign application, an applicant must satisfy the following requirements under Section 44 of the U.S. Trademark Act:
- File its U.S. application within six months of the filing date of its first-filed foreign application;
- Include in its U.S. application a verified statement of its bona fide intent to use its mark in U.S. commerce;
- Its country of origin, and the country of its first-filed foreign application, must either
- be a party to an international treaty or an agreement with the U.S. that provides a right of priority; or
- extend reciprocal priority rights to U.S. nationals; and
- The foreign application must mature to registration.
The Issue
Applicant satisfied the first two requirements. Applicant also met part of the third requirement, because its first-filed foreign application was the EUTM application, and the U.S. and EU are both members of a relevant international treaty, the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights of 1994 (“TRIPS”).
However, because Applicant’s BVI country of origin is not a party to a relevant international treaty or an agreement with the U.S., the remaining issue was whether BVI law extends reciprocal trademark priority rights to U.S. nationals. In other words, does the BVI allow U.S. nationals to claim trademark priority, based on a foreign-filed application?
The Decision
The BVI is a British overseas territory. However, the TTAB held that the BVI in itself qualified as Applicant’s country of origin, because the BVI is internally self-governing.
BVI law affords any party located in a Paris Convention or WTO country (such as the U.S.) the right to claim the trademark priority of its first-filed foreign application if its subsequent BVI application is filed within six months of its foreign application. The source for this priority right is found in the Virgin Islands Trade Marks Act (“VITMA”).
Thus, U.S. nationals can assert a foreign trademark priority right under BVI law. The TTAB held that this is reciprocal to the rights extended to foreign nationals under the U.S. Trademark Act.
Opposer argued, without citing any authority, that the BVI law was required expressly to declare in its laws that U.S. nationals would receive certain rights in its system. The TTAB rejected this unfounded argument.
Consequently, Applicant prevailed on its claim of EU priority. The TTAB dismissed the opposition, contingent on the EUTM application actually maturing to registration to satisfy the fourth U.S. requirement for Applicant’s entitlement to registration.
CandyVerse, LLC v. Zeeth Ltd., Opposition No. 91289595 (T.T.A.B. Nov. 24, 2025).
For further information, please contact William M. Borchard or your CLL attorney.
Senior Counsel
Email | 212.790.9290
Bill has handled domestic and international trademark and copyright matters at the highest level for over 60 years. He has counseled and represented clients on domestic and international trademark matters concerning clearance, registration, proper use, licensing, contested administrative proceedings and infringement claims. He became Senior Counsel in January 2024 and is now focusing on providing guidance and advice to other lawyers within our firm and writing informative and engaging articles on intellectual property law developments.