What is the Basis of My Trademark Filing: Understanding Use in Commerce

traverselegal - March 19, 2012 - Filling out Your Trademark Application, Trademark Law

Not sure what a filing basis is or what yours might be? Confused by Section 1 and Section 44? Thinking you might just click on all the buttons and hope for the best?

Never fear. Keep it tuned right here and I’ll give you a quick breakdown on what you need to know to work your way through this section.

For our purposes, there are two sections you need to be aware of: Section 1 and Section 44. Section 1 is overwhelmingly the most common filing basis, as it covers the use and intended use of trademarks in interstate commerce, territorial commerce involving a U.S. territory, or commerce between the United States and a foreign country.

Section 44, on the other hand, is more rare and typically is used by applicants who are not located in the United States and who are basing their US application on a trademark application or registration from a foreign country.

As Section 1 is the proper basis for most applicants, let’s take a closer look at the specifics.  Filing under Section 1 is a simple matter.  It all depends on whether you are already using the mark in interstate commerce or whether you have a bona fide intent to use the mark in interstate commerce.  In either case, and to avoid losing your registration to fraud, the application must only list those goods and services upon which you’re already using the mark or have a bona fide intent to use the mark.  If you’re not yet using the mark for certain goods and services or don’t yet have a bona fide intent for certain goods and services, don’t include them in the application.

If you are already using the mark in interstate commerce on all of the goods and services listed in the application, your correct basis is Section 1(a).  Select Section 1(a) from the options and submit the required information.

If you are not yet using the mark in commerce, but have a bona fide intent to do so within the next 3-4 years, your correct basis is Section 1(b).

Now, you might be asking, “What exactly is a bona fide intent?”  Well, intent can take many forms, but it’s more than just an idea and less than market-ready.  Bona fide intent might include having a current business plan, creating sample products, or performing other initial business start-up activities.

You should have evidence of your intent in physical or digital form, in case your intent is ever challenged, but you do not need to submit it with your application.  Section 1(b) only requires you to declare that you have a bona fide intent to use the trademark.

As you will see in the application, both Section 1(a) and Section 1(b) have different filing requirements.  Section 1(a) requires you to submit a specimen, or example of how you use the mark in commerce, when you file and to indicate when you started to use the mark.  Section 1(b) requires you to submit a specimen in the future, but means that you will have to either submit an Amendment to Allege Use or a Statement of Use to do so.  Both the Amendment to Allege Use and the Statement of Use mean submitting additional forms and the payment of additional fees.

Selecting a basis is simple enough; it all depends on whether you’re already using the mark now or whether you intend to use it in the future.

Feel free to replay this video and click on any of the links within the form for more information.  And keep an eye out for more of these videos through the website.

I’m Sandhya Mahajan, Trademark Information Network.

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