When filing a trademark application with the U.S. Patent & Trademark Office, you will need to choose a trademark filing basis. 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 should the trademark registration you receive ever be challenged or needed in an infringement dispute. As a result, it is crucial that you choose the correct filing basis.
Section 1(a): In Use Trademark Filing Basis
The most common filing basis used for U.S. trademark filings is Sections 1(a). This is the trademark filing basis used for trademarks that are already being used in commerce in the United States. If you have provided your products and/or services to U.S. customers with you 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 (also known as Section 1(a) of the Lanham Act) but are not using your trademark in commerce, then the registration that you receive is 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. If you file on an In Use basis, your application will go through the registration process as I described in an earlier post.
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 use the intent to use trademark filing basis. This allows you to file an application, including any products and/or services that you have a bona fide intent to provide in connection with your trademark.
Filing on an intent to use basis is basically the same as filing on an in use basis. The major difference between the two is that there 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 done at the time you filed your application, had you filed on an in use basis. You can do so at any time after you file your application. This is done by filing an Amendment to Allege Use. Alternatively, you can wait for the Notice of Allowance to issue, then file a Statement of Use.
Assuming your trademark is approved and published, the Trademark Office will issue a Notice of Allowance. Once the Notice of Allowance issues, you have six months to show 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 several Extensions of Time. Each extension buys you an additional six-month period to start using your trademark. Keep in mind that there is a cost and that 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. You will provide the specimen in a Statement of Use filing once your mark is used in commerce. This 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. Again, 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. This is called a Madrid or Section 66(a) filing. Those seeking to register trademarks in the U.S. can file through other foreign trademark offices. This allows the filer to use a foreign application or registration to apply for registration in the United States. To do so, the filing must be based on a foreign filing in a Madrid Protocol country. These countries are part of the Madrid Protocol international treaty. To repeat, this is not a basis used to file directly through the USPTO, though.
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.
