Trademark Filing Basis: “In Use” vs. “Intent To Use”

Trademark Filing Basis: “In Use” vs. “Intent To Use”

When filing a trademark application, you will need to determine what trademark filing basis you are filing under.  This is an important part of your trademark application.  While it is possible in some cases to amend your trademark filing basis, an error here can be costly.  In fact, some mistakes can make your registration void even after it has become incontestable.  Knowing the correct trademark filing basis for your trademark application is very important because of that risk.

The most common filing bases used in the U.S. are Sections 1(a) – In Use, and 1(b) Intent To Use.  The other two are 44(d) – Foreign Application and 44(e) – Foreign Registration.  These latter two are available through certain international treaties.  They can be used by themselves, or in addition to Sections 1(a) or 1(b).  If filing on the basis of a foreign application, you must file your U.S. application within six months of filing the foreign application.  And if filing on the basis of a foreign registration, that registration must be in good standing.  Both require that the U.S. application is for the same goods and services listed in the foreign application or registration.  Now let’s discuss the trademark filing basis that you will probably need for a U.S. trademark application.

Most applications filed in the U.S. will have a trademark filing basis of either 1(a) or 1(b).  These are mutually exclusive.  Let’s first look at the Section 1(a) – In Use filing basis.  It is exactly like it sounds.  This is the trademark filing basis you will use if you are already using the applied-for mark in commerce.  You must be using the mark in connection with ALL of the goods and services listed in your application.  If you are not using the mark at the time you applied for it, your application is void.  Even if it matures into a registration, someone will always be able to file a trademark cancellation against the registration.  If they can prove the mark wasn’t in use when the application was filed, the registration will be canceled.  To show your use, you must provide what is called a “specimen” with your In Use application.  You also must provide the dates when the mark was first used, and when it was first used in commerce.

If you file on an In Use basis, your application will go through the registration process as I described in an earlier post.  Filing on an Intent to Use basis adds an additional step to the process.  But first, I should mention that if you file on the 1(b) Intent To Use basis, you must actually have an intent to use the mark in commerce with the goods and services listed.  While it can be difficult to prove, if someone shows that you were not actually intending to use the mark, they can oppose your application.

What sets the Intent To Use application apart from In Use is that there is an additional step.  If your application goes through the Trademark Office’s review, and through the publication period without opposition (or any oppositions are resolved in your favor), it does not immediately go to registration.  Instead, the Examining Attorney issues what is called a Notice of Allowance.  At this point, you will have six months to provide a specimen, like what is required upfront in the In Use application.  You can also request several Extensions of Time, and each one buys you an additional six-month period for you to use your goods and/or services in commerce.  But these also have a cost.  And you can only request up to five Extensions.  For these reasons, if you do not plan on using your mark in the next couple years, you might want to wait before filing your application.  Once your mark is used in commerce, you will provide the specimen in what is called a Statement of Use.  If the specimen is acceptable, your application will then move on to registration!

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 (314) 479-3668, 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.