Trademark Journal

US Trademarks: Filing Bases for Registration Applications in the USPTO

CATEGORY: US Filing & Prosecution Procedures
12 June 2021

This series of Journal entries deals with the process of filing and “prosecuting” (i.e., following through to registration) trademark applications in the United States Patent & Trademark Office (“USPTO”). We describe best practices, identify common mistakes that cause applications to fail, and show how to avoid them. We begin with descriptions of the different “filing bases” recognized by the USPTO, and what to keep in mind when choosing an appropriate filing basis for your application.

What is a “Filing Basis”?

The USPTO recognizes four different filing bases for trademark applications. Each application needs to be based on at least one of these in order to be processed and to proceed towards registration.

1. Use in commerce basis (Section 1(a))

This basis is available if the mark is currently being used “in commerce” with all goods and/or services listed on the application.

What is “in commerce”? Goods are “in commerce” when they are sold or transported across state lines in the US. Services are “in commerce” when they are rendered, and/ot their advertising reaches, across state lines in the US.

A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce.

A mark is in use in commerce with services when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.

2. Intent-to-use (“ITU”) basis (Section 1(b))

This basis is available if the mark is not currently being used in commerce with goods/services, but the applicant has at the time of the application a bona fide intention to use the mark in commerce in the near future.

NOTE: An ITU filing basis does not result in a registration of the mark. A mark will only be registered once it is used in commerce. An ITU filing basis only acts as place holder until use occurs. The ITU filing basis can be converted to an in-use basis under Section 1(a) by filing a timely and acceptable Allegation of Use with specimens showing that the mark is being used in commerce.

Once an Intent-to-use application is accepted, the USPTO will issue a Notice of Allowance. The applicant will then need to file an Allegation/Statement of Use with appropriate specimens within the six (6) months following the issuance of the Notice of Allowance or seek a 6-month Extension of Time to File such an Allegation/Statement of Use.

Such Extensions of Time can be filed up to a maximum of five times.

The applicant, however, must use the mark in commerce and file a Statement of Use within three (3) years (36 months) of the issuance date of the Notice of Allowance.

3. Foreign (i.e., non-US) registration basis (Section 44(e))

This basis is available if the applicant owns a foreign registration of the same mark for the same goods and/or services in his/her country of origin.

The applicant will need to provide the following:

  • A copy of the foreign registration, which is still in force, of the same mark from the applicant’s “country of origin.” Note that a foreign registration from a different country is not sufficient.
  • The foreign registration must be in English or include a certified English translation.
  • A description of the goods and/or services in the U.S. application that does not exceed the scope of the goods/services listed in the foreign registration.

An advantage of using the foreign registration basis is that the applicant does not need to show use of the mark in commerce in order to get a registration. Such use does not need to be shown until six (6) years after the registration of the mark. This makes the foreign registration basis especially popular among foreign applicants for US trademarks.

4. Foreign application basis (Section 44(d))

This basis is available if the applicant owns an earlier-filed foreign application that was filed within the six (6) months preceding the U.S. application for the same mark and the same goods and/or services. Note that, unlike the foreign registration basis, use of the foreign application basis does not require that the foreign application concerned should have progressed to the registration stage. It can be – and frequently is – used while the foreign application is still pending.

An application with a foreign application basis also needs to include the following information:

  • the filing date of the foreign application
  • the application number of the foreign application
  • a listing of goods and/or services in the US application that does not exceed the scope of the goods and/or services in the foreign application

NOTE: that an application with a foreign application basis will not result in a registration until either the foreign application is successful, and a foreign registration is obtained, or use in commerce in the US is shown, as discussed above.

Special application procedure:

Madrid Protocol (Section 66 (a))

The Madrid Protocol is an international arrangement that permits applicants who want to register their marks in several countries to file a single application for an international registration with the World Intellectual Property Organization (“WIPO”) instead of filing separate national applications in each country.

If this procedure is used to register in the US, the filing basis of the US application is a request for extension of protection of the international registration to the United States sent from the International Bureau of WIPO.

As in the case of applications using a foreign registration or foreign application basis, the grant of extension of protection to a Madrid Protocol applicant does not require proof that the mark is being used in commerce in the US. Such use does not need to be shown for up to six (6) years after the mark has been registered.

By Suman Naresh

Suman is a graduate of Cambridge University and a member of the English Bar, and a former law professor at Cambridge, the University of Chicago, and Tulane University Law School in New Orleans. He has practiced, lectured, and published in the field of intellectual property for more than forty years. He is the CEO of Trademark ISG, LLC, which provides assistance and intellectual property support services to Joseph Root and Verena Benker.

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