When filing a trademark application with the U.S. Patent & Trademark Office, you must have a legal basis on which to make the filing. The filing basis is like the foundation of your application. If that foundation is not solid, it can cause problems either during the application process or in the future if your trademark registration is ever challenged or relevant to an infringement dispute. Put simply, it is crucial that you choose an appropriate filing basis.
Section 1(a): In Use Trademark Filing Basis
The most straightforward filing basis used for U.S. trademark filings is called a Section 1(a) “in use” basis. As the name implies, this trademark filing basis is used for trademarks that are already being used in commerce in the United States. If you have already been providing your products and/or services to U.S. customers in connection with your trademark, this is likely the basis for you. Keep in mind that you must be using the mark in connection with all of the goods and services listed in your application.
If you file on an in use basis but are not using your trademark in commerce, then your registration will be subject to challenge by others. In other words, someone else can file a trademark cancellation against your registration. If they prove that your trademark wasn’t in use when the application was filed, your registration will be cancelled. In order to file on an in use basis, you must provide what is called a “specimen” with your application. You also must provide the dates when the mark was first used, and when it was first used in commerce.
Section 1(b): Filing Based on Intent to Use
If you are not providing products and/or services with your trademark, that’s okay! You can still file your trademark application, reserving your place “in line” at the USPTO. To do so, you would file on an “intent to use” basis under Section 1(b) of the Trademark Act. This allows you to file an application and include any products and/or services that you have a bona fide intent to provide in connection with your trademark.
The process for intent to use applications is basically the same as in use applications. The major difference is an additional step required for intent to use applications. Eventually, you will need to show the Trademark Office that you are using your trademark in commerce, the same way you would have if you filed on an in use basis. You can file to provide evidence of your use of the trademark at any time after you file your application. This is done by filing an Amendment to Allege Use or a Statement of Use. These filings are the same, but called different names depending on when the filing is made.
Once your application is approved and published, the Trademark Office will issue a Notice of Allowance. Once the Notice of Allowance issues, you have six months to file a Statement of use, showing the Trademark Office that you are using the trademark in commerce by providing a specimen. If you will not have use by the filing deadline, you can request up to five Extensions of Time. Each extension buys you an additional six-month period to start using your trademark. Filing a Statement of Use is the last step before receiving your registration!
Foreign Application and Registration Filing Basis
While the in use and intent to use filing bases are most common, there are other options. These options rely on filings with foreign (i.e. non-U.S.) trademark offices. First, there is the Section 44(e) filing based on a foreign trademark registration. This is pretty straightforward: if you own a trademark registration in a foreign country, you can use it as a basis for filing an application with the USPTO. The U.S. application must be for the same trademark for the same products and/or services.
In addition, you can use the Section 44(e) trademark filing basis if you have filed a trademark application in a foreign country within the last six months. If you do so, it will be as if you filed your U.S. application on the same date. This improves your position “in line” at the Trademark Office. Like filings based on a foreign registration, the trademark and products/services in the application will need to be the same. While Section 44(e) provides a basis for filing, you cannot receive a registration based on a foreign application. Instead, you will need to actually receive the foreign registration first. Once you receive your foreign registration, you can submit it to the USPTO and convert to Section 44(e). Assuming no other issues, the USPTO will then issue your trademark registration.
Madrid Section 66(a) Filing Basis
There is one other trademark filing basis that you might use. However, this one does not involve filing a trademark application through the USPTO. Instead, it is used to file applications through foreign trademark offices at the USPTO in order to register a trademark in the U.S. This is called a Madrid or Section 66(a) filing. To register under the Madrid Protocol, the filing must be based on a foreign filing at the trademark office in a Madrid Protocol country. These countries are part of the Madrid Protocol international treaty, which makes international filings easier for member countries.
Still Not Sure What Trademark Filing Basis to Use?
If you’re not sure whether you’re using your trademark in commerce, or you have other questions about filing your trademark application, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
