U.S. Filing Basis
For most US-based applicants, the choice is as follows:
In Use 1(a)
Applicant should select this basis if he or she is using the trademark in US commerce at the time of filing for goods or services listed in the application.
Intent to Use 1(b)
Applicant should select this basis if he or she has not yet started using the trademark in US commerce at the time of filing but has a good faith intent to use the mark in the future. Once the application is allowed, a Statement of Use, or “SOU,” along with evidence of such usage (called a “specimen”) must be filed in order to secure the registration. An applicant may file evidence of use prior to the Notice of Allowance by filing an Amendment to Allege Use (AAU).
Cost Difference Between In Use Filing Basis and Intent to Use Filing Basis
An intent-to-use 1(b) application tends to cost more than an in-use 1(a) application due to the costs associated with subsequently filing the evidence of use or requesting extensions of time for doing so.
Amending Filing Basis from In Use 1(a) to Intent-to-Use 1(b)
A US trademark application that was originally filed on an In Use 1(a) basis may be amended to substitute intent-to-use 1(b) as a filing basis while retaining the original filing date. A filing basis may be added or amended before publication.
For an intent-to-use 1(b) application, an Amendment to Allege Use may be withdrawn before approval of the mark for publication. However, a Statement of Use cannot be withdrawn once filed.
Foreign Application or Registration Filing Basis
Foreign Application Basis Under Section 44(d)
A US trademark application can claim priority to a foreign trademark application. To claim priority, the prior foreign application must be the first filed application, and the US application must be filed within six months after the filing date of the foreign application. The effective filing date is the date on which the foreign application was first filed in the foreign country. If and when the foreign application matures into a registration, the United States Patent and Trademark Office (USPTO) will require a copy of the foreign registration which, once submitted, will convert the Section 44(d) basis into a section 44(e) basis.
Foreign Registration Basis Under Section 44(e)
This applies when the applicant has a trademark registration in a country outside of the US for the same exact mark and for the same scope of goods and services. Once the USPTO allows the application, a Statement of Use and a specimen need not be filed prior to obtaining registration.
Applicant may be Domiciled, Incorporated, or Organized in a Treaty Country
When filing a US trademark application under a foreign filing basis like Section 44(d) or Section 44(e), the applicant must establish his or her country of origin. To establish the applicant’s country of origin when the applicant is an individual, the applicant may be domiciled in a treaty country. To establish the applicant’s country of origin when the applicant is a corporation or organization, the applicant may be incorporated or organized in a treaty country.
The applicant may also establish a country of origin by submitting the following written statement for the record: “Applicant has had a bona bide and effective industrial or commercial establishment in Canada as of the date of issuance of the foreign registration.” See TMEP Section 1002.04.
U.S. Mark Must be An Exact Match to the Mark in the Foreign Registration or Application
If a trademark application is filed under Section 44(d) or Section 44(e), the US mark must be identical to the mark in the foreign application or registration. Different colors or additional graphic elements or extra words are not permitted.
Scope of the Goods or Services in the U.S. Application Cannot Exceed the Scope of the Goods or Services in the Foreign Application or Registration
Furthermore, the scope of the goods/services in the US application cannot exceed the scope of the identification in the foreign application or registration. So, while certain goods/services can be omitted or deleted from the foreign filing in the US application, goods or services cannot be included in the US application that exceed the scope of the goods/services in the foreign filing. Therefore, if any goods or services have been deleted from the foreign application claimed, care should be taken to omit or remove such deleted goods/services in the US application.
Include Section 1(b) Filing Basis in U.S. Application
Additionally, when a US trademark application is filed under a foreign filing basis under Section 44(d) or Section 44(e), the US application must also include an intent to use basis Section 1(b). Ultimately, the US application may be based on a Section 44(e) foreign registration alone, and the intent to use Section 1(b) may be deleted. As a fallback position, it may be best to keep the intent to use basis and convert it to in use under Section 1(a) prior to registration in case the foreign registration proves to be defective.
For a US application that initially included a priority claim under Section 44(d), it is common for the foreign application to mature into a registration while the US application is still pending. If and when the foreign registration issues, an applicant may add the Section 44(e) filing basis and submit a copy of the foreign registration. This will enable the applicant to delete the intent-to-use basis (Section 1(b)) and proceed to registration without having to show use in commerce in the US.
Whether the applicant should still keep the Section 1(b) intent-to-use basis depends on the strength of the 44(e) foreign registration basis. For example, there are certain risks in making a Section 44(e) claim, such as:
- the foreign registration must originate from the applicant’s country of origin;
- the goods/services in the foreign registration must match those in the US application; and
- the foreign registered mark must exactly match the applied-for mark in the US.
If any of the above concerns are a practical issue, then it may be wise to keep the 1(b) intent-to-use basis and plan on showing use of the mark in the US.
Have any questions on which filing basis you should pick?
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