U.S. Trademark Filing Bases – Here’s What You Need To Know

Every trademark application has to include one or more filing bases.  A “filing basis” is the basis in the Trademark Act upon which an application is filed.  Each filing basis has different requirements that must be satisfied before a trademark can proceed to registration.

The five possible bases are:

  1. Use in Commerce (Trademark Act Section 1(a)) – this applies if you are currently using your mark in commerce with your goods and/or services, and requires that you file a specimen showing use of the mark and a date of first use.
  2. Intent-to-Use (Trademark Act Section 1(b)) – this applies if you have a bona fide intention to use your mark in commerce with your goods and/or services in the relatively near future. If you file based on “intent to use,” your application won’t mature to a registration until you commence use and file a statement of use.  Instead, once the application is approved and published for opposition, the Trademark Office will issue a “notice of allowance.”  A Section 1(b) trademark applicant has three years from the issuance of the notice of allowance to file a statement of use, and must pay for extensions every six months during this period, until a statement of use is filed.
  3. Foreign Registration (Trademark Act Section 44(e)) – this applies if you own a foreign registration of the same mark for the same goods and/or services from your country of origin.
  4. Foreign Application (Trademark Act Section 44(d)) – this applies if you own an earlier-filed foreign application that was filed within six months of your U.S. application for the same mark and the same goods and/or services.  This basis is also called a “foreign priority basis” because you are requesting a “priority” filing date for your U.S. application that is the same date as that of the foreign application filing date. If you file based on a foreign application, your application won’t mature to a registration until your foreign application matures to registration and you submit a copy of the registration certificate to the Trademark Office.
  5. International Application (Trademark Act Section 66(a)) – this applies if you request an extension of protection of an international application to the United States. You cannot combine a Section 66(a) filing basis with any of the bases listed above.

More than one basis can be included in an application, and an application can be amended to assert a different filing basis during the prosecution process.  Indeed, it is common to include a claim of priority under 44(d) in combination with the intent to use (or actual use) of a mark in the United States.  As an example, if an applicant files a U.S. application based on 44(d) and the issuance of the foreign registration is delayed, and if the applicant commences use of the mark in the United States, then the applicant can file an allegation of use and get a registration based on 1(a), but maintain its priority filing date.

Owners of foreign trademark filings who apply based on Section 44(d) (a foreign application) and 44(e) (a foreign registration) enjoy an important benefit: in addition to the possibility of a priority claim, foreign applicants do not need to prove use of the mark in the United States in order to obtain a registration.  This allows foreign applicants to register marks that include much broader specifications of goods and services than are customary in the United States.  For example, a U.S. applicant who files an application to register clothing based on use can only register the mark for the clothing items that are actually sold under the mark un the United States (e.g.: clothing, namely, shirts and pants).  A foreign applicant can get its mark registered based on a very broad foreign registration that includes every conceivable kind of clothing (e.g.: clothing, namely, shirts, pants, kilts, vests, jumpers, shoes), and simply has to confirm its intent to sell those items in the United States.

If an applicant receives a registration based on Section 44(e) or 66(a), it will need to demonstrate use in the United States sometime between the fifth and sixth anniversary of the registration date.  At that time, any unused goods and services would be deleted, and the registration would only be maintained for goods and services actually in use in the United States.  In addition, beginning this month, all registrations are subject to expungement beginning three years after the registration date, as discussed in this post.

Finally, in order to rely on Section 44(e) as a registration basis, the foreign registration must be from the applicant’s country of origin, or from a country where the applicant has a “bona fide and effective industrial or commercial establishment.”  If a company is based in the United Kingdom, it cannot rely on a French registration to obtain a registration in the United States unless it has a brick and mortar establishment in France.  The company could rely on a French application for a priority claim (Section 44(d)), but would ultimately have to use the mark in the United States in order to obtain a registration.

There are many considerations that go into trademark filing strategy.  If you have questions about your trademark applications, or would like to file a U.S. trademark application based on a foreign filing, we would be happy to speak with you.