Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application

A trademark applicant must have a statutory basis for filing their application with the United States Patent & Trademark Office. There are five filing bases and a trademark applicant must fulfill the statutory requirements for one or more of the bases. If you choose to file a TEAS (Trademark Electronic Application System) Plus application under a reduced filing fee, ($275.00 per International Classification) then you must identify and properly satisfy the basis requirements at the time of the filing. If you select to file a TEAS application and do not properly fulfill the filing basis conditions, the Examining Attorney will allow you time to correct the deficiencies in the first Office Action.

Filing Under §1(a) of the Trademark Act (15 U.S. C. §1051(a))

This is commonly referred to as a use based application. A verified statement must be included with the application attesting to use of the trademark in commerce in connection with the goods or services identified in the application at least as early as the filing date. The applicant must include the date of first use of the trademark anywhere and in “commerce”. Commerce has a legal definition that encompasses a type of commerce that can be regulated by the United States Congress. These types include interstate, territorial, and commerce between the United States and a foreign country. Simple intrastate commerce will not suffice. Lastly one specimen for each International Class must be submitted to demonstrate use.

Filing Under §1(b) of the Trademark Act (15 U.S. C. §1051(b))

This application is known as an intent-to-use application. The applicant must verify that it possesses a bona fide intention to use the trademark in commerce in conjunction with the products or services listed in the application. A trademark in an intent-to-use application is not eligible for registration on the Supplemental Register, until use has been demonstrated. Whether a trademark applicant possesses a “bona fide” intention to use the mark in commerce is a question that will be reviewed under an objective determination based on all the circumstances.

Filing Under §44(d) of the Trademark Act (15 U.S. C. §1126(d))

This section of the Trademark Act provides a basis for receiving a priority filing date if the following requirements are met: (1) a claim of priority is filed within six months of the filing date of the foreign application; (2) the application specifies the filing date, serial number, and country of the first filed foreign application; and (3) the application verifies that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services identified in the application. However, before the application can be approved for publication or registration, the applicant must establish a basis under §1(a), §1(b) or 44(e) of the Act.

Filing Under §44(e) of the Trademark Act (15 U.S. C. §1126(e))

A trademark application under §44(e) is based on a trademark registration granted by the applicant’s country of origin. To satisfy the requirements under §44(e) of the Act, applicant must submit a copy of the registration from the applicant’s country of origin (which must either be a party to a convention or treaty in which the U.S. is also a party or extends reciprocal registration rights to nationals of the U.S.). The application must also include the applicant’s declaration that it has a bona fide intention to use the mark in commerce with the goods or services listed in the trademark application. This verified statement is required even if use in commerce is alleged in the application.

Filing Under §66(a) of the Trademark Act (15 U.S. C. §1141f(a))

This section of the Trademark Act allows for an extension of protection of an international registration to the U.S. Similar to the filings made pursuant to Section 44 of the Trademark Act, here the applicant must include a declaration of a bona fide intention to use the mark in commerce with the goods or services set forth in the application.

Selecting the proper filing basis is a critical step in the trademark prosecution. Each basis has different requirements and often there are strategic considerations involved in the selection of a filing basis. The trademark lawyers at our firm would be happy to provide you with a courtesy consultation to assist you in the selection of the appropriate filing basis or bases for your trademark application.