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. Even if you’re a United States business, you may find using these filing bases helpful.

Let’s say you have a trademark filed in any country other than the U.S. In order to have a U.S. filing be retroactive to the date of that foreign filing, you must submit your U.S. application within six months of your foreign one.

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 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 have actual use in commerce fo your trademark 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 the 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.

There’s a really intricate strategy there that you can use foreign trademark applications to assist in the registration of a US application if you’re a US-based business, or if you’re a business from overseas.

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.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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