Selecting the Right Filing Basis for US Trademarks

In order for a trademark to register in the USA it must either be in use inside the territory of the United States, or registered abroad. For this reason, whenever one files an application with the USPTO, a “filing basis” must be specified, indicating on which basis the applicant registers the trademark in the USA.

If an applicant does not yet use the trademark in the USA and does not have a registration abroad, they can still apply for registration, but their application will not register until they are able to demonstrate that they are effectively using the trademark in the USA. In such cases, the applications are based on intent to use. 

There are four main filing bases to registered trademarks in USA

1. Application Based on Use in Commerce:

Use in commerce should be chosen when the trademark being applied for has effectively been used in commerce (inside the US) for the goods and/or services for which it is being applied.

Applying under this basis requires that the following be provided at the moment of filing:

• A Declaration of Use (DOU) declaring that effective use of the trademark has been made on or before the date of filing and stating the date on which the trademark was first used in the United States.
• A Specimen of Use (SOU) showing how the trademark is being used in connection with the goods and/or services for which it has been filed. One specimen per class is sufficient.  

2. Application Based on Intent to Use:

Intent to Use should be chosen when the trademark being applied for has not yet been used for the goods and/or services for which it is being applied. 

Under Intent to use, no Specimen of Use needs to be filed at the moment of application. However, before registration is effectively granted, the trademark will necessarily have to be in use in commerce in the USA. 

A Declaration of Use and a Specimen of Use will have to be filed during the period of six (6) months after official notice has been given that the trademark has been accepted for registration (Notice of Allowance). If the trademark is not used during the 6-month period, then an extension of time may be requested. This will incur additional costs.

3. Application Based on a Foreign Application:

Based on a Foreign Application can be used when an identical trademark has been filed in the applicant's country of origin in the last 6 months by the same owner and for the same goods and/or services. The foreign application must be the very first application of the trademark anywhere.

This basis gives the owner priority over any conflicting trademarks that are filed in the United States after the foreign application was filed in the foreign country. Once registered, a translated (if necessary) copy of the trademark certificate will have to be submitted to make the registration in the USA effective. This will incur additional costs.

If the foreign application were to be rejected by the local office through which it is being processed, the applicant would then have to transform the application in the United States to be based either on Use in Commerce or Intent to Use, losing the priority date given by the foreign application.

4. Application Based on a Foreign Registration:

Based on a Foreign Registration can be used when an identical trademark has been effectively registered in the applicant's country of origin by the same owner and for the same goods and/or services. A translated (if necessary) copy of the trademark certificate will have to be provided.

The real benefit of this basis is that the trademark does not have to be in use in order for it to be granted or effectively registered. However, the trademark will have to be used in the USA after registration is granted.

Having a registered trademark in the country of origin DOES NOT ensure successful registration of the trademark in the United States. The application may receive office actions or third-party oppositions.

If a trademark qualifies for more than one filing basis, the selection must be done carefully, preferably after consulting with a trademark specialist.

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