TRADEMARK FILING BASIS

A crucial aspect in moving forward with any trademark application is designating the proper trademark filing basis. Filing basis are categories the USPTO uses to organize trademark applications in relation to their current status within the actual market. A mark that is actively being used is organized separately, (and has different filing requirements), in comparison to a mark that is not being actively used, or a mark being actively used in a market outside of the United States. Though assigning a filing basis is not strictly mandatory, at least within the initial application, in order to register a mark without delay or issue it is useful for applicants to select the correct filing basis preemptively.

Though this may sound complicated, the process by which a mark is assigned a filing basis is actually quite simple, and choosing between the four options the USPTO offers to prospective registrants requires no more information than what is readily available to the owner of the mark.

• Section 1(a) (Use in Commerce)

A Section 1(a) filing basis is the simplest form by which a trademark registration process tends to occur. In order to file your mark under a Section 1(a), the owner of the mark must prove active usage of the mark in commerce. What this means for the registrant, is that upon filing the trademark application, they will also be expected to produce and file evidence of the mark being used in transactions within the market. The USPTO will expect photographic evidence of the products or services offered by the owner of the mark, as well as evidence displaying its active sale, often in the form of a website advertising the product.

• Section 1(b) (Intent to Use)

A Section 2(b) filing basis occurs when the owner of the mark is not actively using it within commerce, yet has an intent to use it within commerce in the near future. This manner of “calling dibs” on a mark, can be useful for a prospective registrant who is in the early stages of establishing their business, as by guaranteeing ownership of the mark, the prospective registrant can safeguard against claims by other entities upon the same or similar mark after serious investments have already been made. The main distinction between Section 1(b) and Section 1(a) filing is the process following the USPTO’s confirmation of registration, as registrants of a Section 1(b) filed mark will be required to then prove active usage of the mark, after which the application will progress to a short opposition period, before finally achieving registered status.

• Section 44 (d)

Less common then the Section 1 categories, the Section 44(d) application utilized by prospective owners of marks already in the process of applying for registration in a foreign country. The USPTO allows the streamlining of the registration products for such cases by recognizing the start date of the foreign application as the priority date for the same mark in a domestic application, as long as it was filed in the six month period following the former process. If, for instance, a London businessman files an application to register the mark GENERIC in the UK on April 1, 2023, and then an American businessman applies for the same mark in a competitive field in May 1,2023, the London Businessman can file a Section 44(d) trademark application that will grant his claim priority, due to the earlier date of application in a foreign country. Section 44(d) applications are generally rarer than the Section 1 applications due to the shorter time frame within which they are relevant, as once the foreign application is officially registered within said foreign country, mark owners will instead file on Section 44(e) basis.

• Section 44(e)

The Section 44(e) filing basis is only used when the prospective registrant already has official registration for the same mark in a foreign country. By proving registration in said foreign country, the applicant can then utilize the same mark in the US without being hampered by the extensive application process a domestic owner of a unique mark would require.

A filing basis will dictate the structure and time frame of a trademark application, and as such it is crucial to designate the filing basis that best suits each mark and context in order to optimize the process, a designation that does require some background information on how the categories work. Once grasped, however, these four categories will make progressing with any trademark application simple and straightforward.

If you have any questions, or require any assistance, the experienced lawyers at Sari Law Firm are alway available to provide clear and concise legal aid in regards to your trademarks.