Trademark applications based on “use in commerce” require trademark applicants to submit their specimen and first use dates at the start of the process
When applying for a trademark registration with the United States Patent and Trademark Office (USPTO), the trademark applicant can file their trademark application based on “use in commerce” or a “bona fide intent to use” the trademark in commerce. If the trademark owner is already using their trademark in commerce, meaning commerce that Congress can regulate, they most likely will file their trademark application based on use in commerce. Congress can regulate commerce that involves parties from different states or from the U.S. and a foreign country engaged in business together.
Screenshot of trademark application process where the applicant chooses 1(a), based on use, or 1(b) based on an intent to use
Unlike filing on the basis of an intent to use, trademark applications that claim use in commerce must demonstrate use in commerce of the trademark prior to filing the trademark application. In order to demonstrate this, trademark applications based on use must submit a specimen at the time they filed as well as the first use date of the trademark anywhere and the first use date of the trademark in commerce.
The requirement of submitting a specimen for use in commerce based applications at the time the application is filed makes sense because the trademark applicant is declaring they are already using the trademark in commerce. Conversely, it logically follows that trademark applications filed on an intent to use basis file their specimens and first use dates at the end of the application process because they declare they have not yet used the trademark they applied for in commerce.
Trademark application "Use in Commerce" specimen and first use dates requirement section
A benefit of filing a trademark application based on use in commerce is that the application process is shorter than when filing a trademark application based on an intent to use the trademark. The reason why the application process is shorter for trademark applications based on use in commerce is because after the opposition period, assuming no opposition is filed, a use based trademark application is approved for publication, whereas an intent to use trademark application will be granted a Notice of Allowance. For a trademark application to be registered after the Notice of Allowance, the trademark owner must submit a Statement of Use, which is when they first submit a specimen. By submitting the specimen with the original trademark application in use base application, the trademark owner gets to skip the phase of being granted a Notice of Allowance and submitting a follow-up Statement of Use altogether and proceed straight to registration.
Flow chart of the full trademark application process based on use in commerce
If you have any questions about trademark applications based on use in commerce, feel free to leave a comment below or to contact us for a Free Trademark Consultation today!