Learn about the differences between the two trademark application filing bases at the United States Patent and Trademark Office
An aspect of applying for a trademark application that often confuses people is whether they should file their application based on "use in commerce” or if they should file it based on an “intent to use” the trademark in commerce. The fundamental difference of the two separate filing bases boils down to whether the trademark is currently in use or if the applicant for a trademark has not yet used the trademark in commerce. Depending on individual circumstances, there are many strategic reasons trademark owners may apply for a trademark application based on use in commerce or a bona fide intent to use the trademark in commerce.
Screenshot of application section where applicant chooses 1(a) or 1(b)
Filing a Trademark Based on Use in Commerce - 1(a)
Trademark owners who already use their trademark usually file their trademark applications based on “use in commerce” of the trademark. In order for a trademark application based on use in commerce to be accepted by the Trademark Examining Attorney for registration, the Applicant must submit a trademark specimen showing the trademark in commerce at the time they file the application or they will receive an Office Action requiring submission of a proper specimen. In addition, the trademark owner will need to tell the USPTO when the mark was first used and when it was first used in commerce.
For use based trademark applications, the trademark must have been used in connection with all the applied for goods or services in the application. For example, if a trademark application covers shirt and shoes, but the trademark has only been used for shirts, the applicant cannot file the application based on use in connection with the shoes. In that scenario, the application can be filed for both in use with regards to the shirts, and intent to use with regards to the shoes.
Screen shot where 1(a) applications attach a specimen and list first use dates
Filing a Trademark Based on Intent to Use - 1(b)
In some instances, an entrepreneur or company will have the perfect name for a product, brand or phrase for a slogan that they want to protect via trademark law but have not used the trademark in commerce yet. Fear not, in these situations, an entity can protect their future plans to use a trademark by filing an “intent to use” trademark application as long as they have a bona fide intent to use the trademark in the (relatively) near future.
Unlike use based trademark applications, intent to use trademark applications do not need to submit a trademark specimen at the same time as they file for the obvious reason that they cannot show the trademark being used in commerce at the time of filing. If the trademark application meets all the other requirements of the trademark application process, the application will be granted a Notice of Allowance. A Notice of Allowance is basically pre-approval of the trademark on the condition that the trademark will not be registered unless and until trademark applicant can show the mark being used in commerce by submitting a specimen. Initially, the trademark owner has six months to submit a specimen by filing a Statement of Use for their trademark after the Notice of Allowance is issue by the USPTO. The trademark applicant can extend the deadline to file a Statement of Use for six months at a time for a time period of up to three years. If an extension to submit a Statement of Use is not submitted or after three years of extensions are filed with no Statement of Use submitted, the trademark application will be considered abandoned.
One of the drawbacks of intent to use applications is that it costs additional fees paid to the USPTO to file six month extensions to submit a Statement of Use after the first extension, and it costs an additional fee to submit the Statement of Use.
Screenshot of Statement of Use online filing page, which can be found here
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