What Is the Correct Filing Basis for Your Trademark?

What filing basis should you use in your trademark application?

This is one of the most complicated and technical questions in any trademark application. First, you tell the government what trademark you’d like to register, then you answer the question about what goods and services you’re going to be providing under the trademark. After that, you get to this question about what your filing basis is.

It’s important to understand the four common choices for filing basis on a trademark application.

1. 1(a) Basis: Actual Use in Commerce
2. 1(b) Basis: Intent-to-Use in Commerce
3. 44(d) Basis: Foreign Application
4. 44(e) Basis: Foreign Registration

What is a Section 1(a) Filing Basis?

In order to claim a section 1(a) filing basis for your trademark application, you must actually be offering the goods or services listed in the trademark application.

One of the most common errors that we see clients encounter is trying to make a claim of using commerce too early. Forming the corporation or buying the domain name does not qualify as using the mark in commerce. You must have sales of your product across states lines, and not to family or friends. Likewise, if you’re a servicer provider, you should have clients that come from more than one state.

The danger in claiming that you have an actual use in commerce when you don’t, is that you could receive your registration and someone else could ultimately try to cancel it based on a fraudulent or incorrect statement that you made in your application.

What is a Section 1(b) Filing Basis?

A section 1(b) filing basis is based on an intent to use the trademark in commerce.

This filing basis is beneficial because it gives you the opportunity to get your business started and reserve rights in the name of your product or service. Even if you haven’t made sales yet, you can file an intent to use application and the federal priority date on your trademark will be the filing date.

For example, if you filed your application in November of 2019, but the registration doesn’t actually issue until December 2020, your rights will always be retroactive to that filing date of November 2019.

Using an intent to use application to reserve your rights federally on your trademark can be a very good legal strategy.

What are Section 44(d) and 44(e) Filing Bases?

Now, two of the lesser-used filing bases are 44(d) and 44(e). This is because they’re based on foreign applications or registrations respectively. Even if you’re a United States business, you may find using these filing bases helpful.

The use of a 44(d) filing basis for your US trademark is a strategy is known as a stealth filing and uses a treaty called the Paris Convention. If you file your US trademark application within six months of filing in any other member country, your rights will be retroactive to the original application’s filing date.

Think of it this way, you file an application in the UK on April 1st, 2019. So long as you file your US application by September 30th, 2019, your US priority date will be backdated to the date of the UK application on April 1st.

This trademark filing strategy is often used in conjunction with trademark offices that do not make their databases public, unlike the United States. It allows businesses to get an early priority date, without tipping competitors off to their plans.

This is a really cool strategy that you can use for a number of reasons.

For example, if you are a UK based business that is hoping to get rights in the United States, you can file based on your UK application within six months of your UK filing.

On the other hand, if you’re a US based business and you don’t think you’re going to actually use your trademark in commerce for a while, you might go and file your application in a foreign country that doesn’t require proof of commercial use.

Once that registers, you could then go and use it as a 44(e) filing basis in the U.S. Typically, for the first three years after your mark is registered, nobody can even challenge it on grounds of non-use.

Final thoughts

As you can see, there are four common filing bases that you can consider when filing a US trademark application. You should be extraordinarily careful if you’re going to claim a section 1(a) or use in commerce basis, and make sure you’re actually complying with federal law about what use in commerce means.

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Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 10,000 trademarks and handled over 1,500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.