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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 subject to cancellation even after you receive it.  Using 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) for trademarks that are in use, and 1(b) intent to use.  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 your trademark in commerce.  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 and are not using your trademark when you file your application, the registration that you receive will always be subject to challenge by others.  This means that others can file a trademark cancellation against the registration.  If they can prove the mark wasn’t in use when the application was filed, your registration will be cancelled.  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, or complete the contact form found on this page to schedule your free initial consultation today.  I look forward to speaking with you.


Contact Kevin

P.O. Box 94208
Phoenix, AZ 85070

(480) 360-3499

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