## Facts

- Langis Foods Ltd., a Canadian company, filed Canadian applications on March 28, 1969 to register LEMON TREE, ORANGE TREE, and APPLE TREE, and later began using those marks in Canada on May 15, 1969.
- SCM Corporation, a U.S. company, began using LEMON TREE in the United States on May 15, 1969 and filed a U.S. application to register LEMON TREE on June 18, 1969.
- Langis filed U.S. applications on September 19, 1969 for LEMON TREE, ORANGE TREE, and APPLE TREE, claiming priority under Lanham Act § 44(d) based on its earlier Canadian filings and timely U.S. filing within six months.
- While the applications were pending, SCM began using ORANGE TREE and LIME TREE in the United States (June 1970) and applied to register them (July 22, 1970).
- The Patent Office registered LEMON TREE to Langis and indicated APPLE TREE and ORANGE TREE would register absent opposition; SCM opposed the latter applications and sought cancellation of Langis’s LEMON TREE registration.
- The Trademark Trial and Appeal Board ruled for Langis, treating its U.S. applications as having priority as of the Canadian filing date under § 44(d).
- The district court reversed, reasoning that U.S. priority depended on U.S. use; Langis appealed.

## Issues

1. Whether Lanham Act § 44(d) gives a foreign applicant, who filed first in its home country and then filed in the United States within six months, priority as of the foreign filing date over a domestic party that began U.S. use after the foreign filing but before the U.S. filing.
2. Whether the § 44(d) priority right applies even if the foreign applicant had not used the mark anywhere at the time of the initial foreign filing.

## Decision

- The court of appeals reversed the district court and reinstated the administrative result favoring Langis.
- It held that Langis had priority for U.S. registration based on its Canadian filing date because it filed in the United States within the § 44(d) six-month window.
- SCM’s intervening U.S. use and application filings during that six-month period did not defeat Langis’s priority claim.

## Legal Principles

- A foreign applicant who first files in a Paris Union country and files in the United States for the same mark within six months may claim priority in U.S. registration as of the foreign filing date under Lanham Act § 44(d).
- The § 44(d) priority right protects the foreign applicant against intervening U.S. uses and filings that occur after the foreign filing date but before the U.S. filing date.
- Priority under § 44(d) is triggered by the foreign application filing date and is not conditioned on the applicant’s prior use of the mark at the time of the foreign filing.
- Where § 44(d) applies, domestic first-in-use principles do not control the registration priority dispute for the covered period.

## Conclusion

The court held that a foreign applicant who timely files in the United States under Lanham Act § 44(d) receives U.S. registration priority dating back to its first foreign filing, defeating a domestic party’s intervening U.S. use occurring within the statutory six-month priority period.


SCM Corp. v. Langis Foods Ltd., 539 F.2d 196 (D.C. Cir. 1976)