Basis for Filing

Basis for Filing

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Each classification selected must have a filing basis; there are 4 filing basis which an applicant may select for the listed goods/services:

Section 1(a): In-Use in Commerce

Select this if the applicant is currently using the mark in commerce that the U.S. Congress may regulate (e. g., interstate commerce, territorial commerce [with Guam or American Samoa], or commerce between the United States and a foreign country) in connection with ALL the goods and/or services identified in the application. The applicant must also provide the date of first use anywhere and the date of use in commerce that the U.S. Congress may regulate, and a specimen showing such use. Use may be by the applicant, the applicant’s related company, or a licensee of the applicant (or, earlier use by a predecessor in interest; however, current use must be being made at the time of the application by the applicant, the applicant’s related company, or a licensee of applicant).

A specimen (sample of use) must be provided along with the dates of first use of the mark anywhere and in commerce in connection with the listed goods/services. For goods, the specimens should show the mark appearing on the goods, on the container of the goods, or point-of-sale displays. For services, the specimen should show the mark in conjunction with the sale, offering or advertising of the services.

Section 1(b): Intent-to-Use

Select this if the applicant has not yet made actual use of the mark in commerce that the U. S. Congress may regulate (e. g., interstate commerce, territorial commerce [with Guam or American Samoa], or commerce between the United States and a foreign country) in connection with ALL the goods and/or services identified in the application, but has a bona fide (good faith) intention to use the mark in commerce at a later time after filing of this application. The intention to use the mark may be by the applicant, the applicant’s related company, or the licensee of the applicant. If filing under this basis, the applicant will be required to submit a demonstration of use (i. e., an Allegation of Use with an additional fee and a specimen (sample of use)) later in the application process along with an additional fee.

More than one basis may be selected, but a claim for both §§1(a) and 1(b) for the identical goods or services should not be made in one application. If claiming a Section 1(a) basis, it is not necessary or appropriate also to claim a Section 1(b) basis for the same goods or services, simply to indicate an intent to continue using the mark for those goods or services – the Section 1(a) basis covers this. 

Section 44(d): Foreign Application

Select this if filing the U. S. application within six (6) months of filing the first foreign application to register the mark in a defined treaty country. This establishes a “right of priority,” however, the foreign application must be for the same mark (standard character, design, etc.), for the same or equivalent goods/services, and have common ownership. This filing basis is not appropriate if you are merely doing business or intend to do business outside of the United States, and do not actually have a foreign application.

Section 44(e): Foreign Registration

Select this if a foreign registration already exists. You must provide all relevant information about the existing foreign registration(s), including attaching a .jpg or .pdf files of a copy of the foreign registration certificate. The foreign registration(s) must be in force at the time of filing of the U. S. application. If the foreign registration is not in English, you must also provide a translation of the foreign registration with the copy of the foreign registration. The translator should sign the translation, but need not swear to the translation. This basis is not appropriate if you merely are doing business or intend to do business outside of the United States, and do not actually have a foreign registration; or, if you merely have a foreign application, which has not yet matured into a foreign registration.

Input from the USPTO^[1]Some of the material for this section is taken from the USPTO, “Basis for Filing,” available at https://www.uspto.gov/trademarks-getting-started/trademark-basics/basis-filing. No copyright is … Continue reading

Under the basis for filing either “use in commerce” or “intent to use,” prior to registration you must demonstrate that you have used the mark in commerce. The types of commerce encompassed in this definition are interstate, territorial, and between the United States and a foreign country. The basic difference between these two filing bases is whether you have started to use the mark on all the goods/services identified in your application.

If you have already used your mark in commerce with all the goods/services in your application, you may file under the “use in commerce” basis.

If you have not yet used your mark in commerce with all the goods/services in your application, but intend to do so in the near future, you must file your trademark application under an “intent to use” basis. This means you have a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating samples products, or performing other initial business activities). An “intent to use” basis requires filing an additional form(s) and fee(s) prior to registration that is not required if you file under “use in commerce” at the outset.

Use of a mark in commerce is generally established by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce, as well as submitting a specimen (example) showing how you actually use your mark in commerce.