IP Law Daily, TRADEMARK—TTAB: Foreign application date sufficient to establish priority of registration, (Dec 3, 2025)

By Deirdre Kennedy, J.D.

The U.S. application was filed within six months of the first-filed foreign application and included the requisite verified statement of applicant’s bona fide intent to use the mark in commerce.

The application for registration of the mark CANDYVERSE was approved despite opposition from a claimant of the same mark because the applicant was able to show priority registration. Even though the original registration was filed in the British Virgin Islands, the applicant met the circumstances set forth in the U.S. Trademark Act that allows a foreign registration to claim priority (CandyVerse, LLC v. Zeeth Ltd., No. 91289595 (T.T.A.B. Nov. 24, 2025)).

Applicant Zeeth Ltd., a company organized and located in the British Virgin Islands, sought registration of the mark CANDYVERSE, in standard characters, for use with “confectionery made of sugar, dessert puddings and bakery desserts” in International Class 30, “flavoured frozen soft drinks; iced soft drinks; part frozen slush fruit drinks; slush fruit drinks” in International Class 32, and “retail store services featuring food and drink products” in International Class 35 based on its asserted bona fide intention to use the mark in commerce. Zeeth filed its application Serial No. 97432801 on May 27, 2022, and claimed a priority date of December 2, 2021, based on European Union Application No. 018613058 under Trademark Act Section 44(d).

CandyVerse LLC opposed registration of Zeeth’s mark on the ground of priority and likelihood of confusion. CandyVerse alleged common law rights in the marks CANDYVERSE for use with “candy, educational and entertainment programs about candy and confections, retail store services featuring candy, bulk candy, novelty candy, oversized candy, confectionary-based goods, ice cream, clothing t-shirts, candy-related merchandise, gift items, candy accessories, toys, beverages, greeting cards, packaged candy products, and other related services” beginning “at least as early as March 4, 2022.” CandyVerse also pleaded ownership of two pending applications filed on January 26, 2024, to register the above marks for use with candy in International Class 30, retail store services featuring candy, ice cream, clothing, and other gift items in International Class 35, and “educational and entertainment services, namely, short-form video programs about candy and confections, accessible by computer networks” in International Class 41.

Zeeth admitted that (1) the parties’ marks are “identical in sound, appearance, and commercial impression,” (2) the parties’ goods and services with which the parties’ marks are used are “identical in some instances, and otherwise, confusingly similar,” and (3) the “coexistence of the marks is likely to cause confusion, mistake or deception,” but denied that CandyVerse had priority.

Likelihood of confusion. To prevail on its likelihood of confusion claim under Section 2(d), CandyVerse must establish that it has priority of use, and that contemporaneous use of the marks in connection with their respective goods and services would be likely to cause confusion or mistake, or to deceive consumers. The parties agreed that there is no genuine dispute of material fact that contemporaneous use of the marks is likely to cause confusion. The sole issue in dispute, therefore, was whether CandyVerse had prior proprietary rights in its pleaded marks.

Priority claims. CandyVerse acknowledged that it only prevails on its claim of priority if Zeeth cannot assert priority based on its foreign application under Section 44(d). Zeeth claimed December 2, 2021, as its constructive use date based on the filing date of its European Union Trademark Application but CandyVerse argued that Zeeth was not entitled to claim priority and can only rely on the filing date of its U.S. application, May 27, 2022, as its constructive use date.

Trademark Act Section 44(d) allows an applicant to rely on the filing date of an application in a foreign country as its date of constructive use under certain circumstances: (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.

Here, Zeeth’s application was filed within six months of the first-filed foreign application and included the requisite verified statement of its bona fide intent to use the mark in commerce. The foreign application, filed in the European Union, was eligible for benefits under Section 44(b) because the European Union and the United States are members of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights. Thus, Zeeth satisfied the timing, verified statement, and eligible foreign application requirements of Section 44.

Zeeth conceded that the British Virgin Islands is not a party to a relevant treaty or agreement with the United States, so ultimately, the parties’ dispute boiled down to whether the British Virgin Islands extends reciprocal rights to nationals of the United States by law, thus granting a right to priority under Trademark Act Section 44(d).

The court noted that the Virgin Islands Trade Marks Act (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 establish a limit with respect to a person’s country of origin, U.S. nationals have the opportunity to assert a priority right.

CandyVerse submitted evidence to show that it first used its marks in commerce on March 4, 2022, which is later than Zeeth’s December 2, 2021, priority date. Thus, CandyVerse failed to show there was no genuine dispute of material fact that it had prior proprietary rights in its pleaded marks. Accordingly, CandyVerse’s motion for summary judgment was denied. Zeeth’s cross-motion for summary judgment was granted subject to its establishment of constructive use.

The Case is Opposition No. 91289595.

Attorneys: Nick Guinn (Gunn, Lee & Cave, PC) for Candyverse, LLC. M. Scott Alprin (Alprin Law Offices, PC) for Zeeth Ltd.

Companies: CandyVerse LLC; Zeeth Ltd.

Cases: Trademark USPTO