On January 1, 2021, European Union (EU) trademark registrations stopped covering the United Kingdom (UK) as a result of Brexit. U.S. applications based on an EU registration and filed by UK applicants on or after this date may be affected and are discussed below. UK applicants include applicants with a UK entity and UK address, a non-EU entity and UK address, or a UK entity and non-EU address. Read the withdrawal agreement between the UK and EU.
After January 1, 2021, all EU trademark registration owners should have received a comparable or cloned UK registration from the UK Intellectual Property Office (UKIPO). The cloned registration number consists of the prefix UK009 and the last eight digits of the EU registration number. All other data (including the trademark, goods or services, registration date, and expiration date) in the cloned UK registration should be identical to that in the EU registration. Learn more about EU trademark protection and comparable UK trademarks.
This webpage guidance issued in March 2021 supersedes any previous United States Patent and Trademark Office (USPTO) guidance, to the extent there are any conflicts.
Specific U.S. applications affected by Brexit
U.S. applications based on §44(e)
If you’re a UK applicant and want to file for a U.S. trademark registration under Trademark Act §44(e), you may not use an EU trademark registration, if both of the following are true:
- The EU registration issued on or after January 1, 2021.
- Your country of origin is only the UK, not the EU.
To file in the United States under §44(e) based on an EU registration, you must be able to establish that one of the remaining countries in the EU is your country of origin. See TMEP §§1002.01, 1002.04.
U.S. applications based solely on §44(d)
If you’re a UK applicant who filed a U.S. application only under §44(d) based on your EU foreign application, we presume you’ll also be registering your trademark based on §44(e), and you’ll need to establish the EU is your country of origin prior to registration.
Learn more about filing based on §44(d) and §44(e).
U.S. filings and proceedings not affected by Brexit
The following U.S. applications, registrations, and Trademark Trial and Appeal Board (TTAB) proceedings aren’t impacted by Brexit:
- Based on §44(e) and claiming foreign registrations from countries other than the EU.
- Based on §44(e) and claiming the EU as a country of origin, but can show Paris Convention eligibility in a current EU member country.
- Based on §44(d) and §1 combined bases, and not asserting a §44(e) basis.
- Based solely on §1(a) or §1(b).
- Based on §66(a) (Madrid Protocol).
- Registration maintenance filings.
- TTAB proceedings (will only be affected in very rare situations and a party may file a §7 correction or amendment).
Examination of U.S. applications affected by Brexit
The guidance in the table below shows how we’ll examine U.S. applications that meet the following criteria:
- Examined on or after January 1, 2021.
- Filed by a UK applicant, as stated above.
- Based on §44(e) claiming an EU registration or based on §44(d) that also completes a §44(e) basis with an EU registration.
| EU registration date | EU/UK clone registration expiring or expired before U.S. registration issues | Issues with U.S. application | How USPTO will examine U.S. application* |
|---|---|---|---|
Issued before January 1, 2021 (Applies to EU and UK cloned registrations) | No | Applicant may rely on UK cloned registration to support §44(e) basis. | Examining attorney will update our records to reference UK cloned registration number. Examining attorney will issue an examiner’s amendment letting you know about the update. No action on your part is needed. If you receive an office action with an advisory about updating the records to the UK clone, you will need to address the other issues in the office action to avoid abandonment of the U.S. application. |
Issued before January 1, 2021 (Applies to EU and UK cloned registrations) | Yes | Applicant may rely on UK cloned registration to support §44(e) basis.
Applicant’s UK cloned registration will expire within six months after the date of approval for publication. See TMEP §1004.01(a). | Examining attorney will issue a nonfinal office action requiring either (1) proof the UK cloned registration was renewed, or (2) proof the EU registration was renewed and evidence of the EU being applicant’s country of origin. See TMEP §1002.04. If you respond that proof of renewal of the UK cloned registration is pending, examining attorney will suspend your application. See TMEP §1004.01(a). If you’re relying on proof of renewal of the EU registration and do not provide country of origin evidence, the suspension letter will include an advisory that evidence has not been provided and that refusal is maintained and will be made final when the application is removed from suspension. See TMEP §716.01. |
Issued on or after January 1, 2021 (Applies to EU registrations only) | No | USPTO will presume the EU is not the UK applicant’s country of origin. See TMEP §1002.04. | Examining attorney will issue nonfinal office action refusing EU as applicant’s country of origin. See TMEP §1002.04. For applications based only on §44(d) that also will complete a §44(e) basis, examining attorney will issue advisory applicant will receive a future refusal EU is not applicant’s country of origin. |
Issued on or after January 1, 2021 (Applies to EU registrations only) | Yes | USPTO will presume the EU is not the UK applicant’s country of origin. See TMEP §1002.04. Applicant’s EU registration will expire within six months after the date of approval for publication. See TMEP §1004.01(a). | Examining attorney will issue a nonfinal office action requiring proof the EU registration was renewed and refusing EU registration because not from the applicant’s country of origin. See TMEP §1002.04. If you respond that proof of renewal is pending, examining attorney will suspend your application. See TMEP §1004.01(a). If you don’t provide country of origin evidence, the suspension letter will include an advisory that evidence has not been provided and that refusal is maintained and will be made final when the application is removed from suspension. See TMEP §716.01. |
*In a multiple basis application, if the §44(e) basis cannot be completed, the UK applicant may delete the §44(e) basis and proceed with §1(a) or §1(b) filing basis. See TMEP §§806.03(j), 1002.01. UK applicants also have the option to substitute a §1 basis for a §44(e) basis or provide a different foreign registration from a country other than the EU (e.g., the UK), if they can establish the registration is from their country of origin.