Knowledge

Trade Marks

What is the correct Filing Basis for my U.S. Trademark?

Max Steinhausen

As the world’s largest economy, the U.S. market represents a huge source of opportunity for businesses. This means it is crucial to understand how to protect your brand from competitors before you expand your business to the U.S. market.

The United States Patent and Trademarks Office (USPTO) is the relevant U.S. intellectual property office responsible for registering trade marks. In order to file a trade mark with the USPTO, you must designate at least one “basis” for filing the trade mark. Each filing basis has specific requirements that need to be met in order for your trade mark to be registered in the US. This differs from the Australian process for filing a trade mark, which does not require you to nominate the use of your trade mark.

The four valid filing bases for a U.S. trade mark are:

  1. Use in commerce basis – Section 1(a) U.S. Trademark Act
  2. Intent-to-use basis – Section 1(b) U.S. Trademark Act
  3. Foreign registration basis – Section 44(e) U.S. Trademark Act
  4. Foreign application basis – Section 44(d) U.S. Trademark Act

1. Use in commerce basis – Section 1(a) U.S. Trademark Act

This filing basis applies if you are currently using your trade mark in commerce between more than one state or U.S. territory, or in commerce between the U.S. and another country.

To establish this basis, you must provide the following evidence:

  • date of first use of your mark anywhere on the goods or in connection with the services. For goods, the trade mark must appear on the goods, such as on tags and labels, the container for the goods, or displays associated with the goods. For services, the trade mark must be used on the sale or advertising of your services;
  • use of your mark in commerce (in the course of trade);
  • ‘specimens’ of use for each class of goods/ services i.e. real life samples of how your trade mark is actually being used in commerce. These should be photographs of how purchasers would encounter your trade mark in the market, such as the mark displayed on the entire product and packaging or the mark used on a website to advertise your services. This will not include mock-ups, computer illustrations or artist’s renderings.

2. Intent-to-use basis – Section 1(b) U.S. Trademark Act

This filing basis applies if you have not used your trade mark in the U.S. yet, but have a genuine intention to do so in the future. This must be based on good faith or a bona fide intent to use the mark in commerce, which could be demonstrated by evidence of a business plan, creating sample products or undertaking initial business activities. A mere idea that you might use the trade mark in the future will be insufficient to establish intent to use.

You may also be required to complete additional forms and pay additional fees under this basis.

Note that you cannot claim both the ‘use in commerce’ basis and ‘intent to use’ basis for identical goods or services in the same application.

A trade mark filed on the ‘intent to use’ basis cannot be registered until you convert the application to one based on ‘use in commerce’ by showing that you have actually started using your mark.

A Declaration of Use and a Specimen of Use must be filed within six months after receiving notice that your trade mark has been accepted for registration.

However, filing before use allows you to secure an earlier filing date, offering greater protection against competitors who might be seeking to exploit your trade mark in the US.

3. Foreign registration basis – Section 44(e) U.S. Trademark Act

This filing basis applies if you own a foreign registration of the same trade mark in the same class/es of goods and services in your country of origin i.e. for individuals, the country in which you are a national, and for businesses, the country in which you are domiciled, incorporated or organised. Any trade mark filed in the US under this basis must exactly match the foreign mark.

To establish this basis, you must provide the following evidence:

  • a copy of your foreign registration of the same trade mark from your country of origin. This must be a true copy, photocopy, certification or certified copy of a document issued or certified by the intellectual property office of your country of origin. It must be in force at the time the USPTO issues a registration based on your foreign registration;
  • if relevant, an English translation of the foreign registration or proof of its renewal;
  • a listing of goods and/or services that does not exceed the scope of the foreign registration.

4. Foreign application basis – Section 44(d) U.S. Trademark Act

This filing basis applies if you own an earlier-filed foreign application filed within six months of your U.S. application for the same mark in the same class/es of goods and services. It is also known as a ‘foreign priority basis’ because it allows you to receive an earlier effective filing date for your U.S. trade mark application.

Like the foreign registration filing basis, the U.S. trade mark must be exactly the same as the mark in the foreign trade mark application.

To establish this basis, you must provide the following:

  • a claim of priority i.e. a foreign application filed within the last six months;
  • the filing date, serial number and foreign country of the first filed foreign application OR a statement that your U.S. application is based on a subsequently filed application in a foreign country and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of;
  • a listing of goods and/or services that do not exceed the scope of the goods and/or services in the foreign registration.

Although you can file an application on this basis to receive a priority filing date, you must show either use in commerce and/or foreign registration of your trade mark in order for it to be registered.

Note that the Madrid Protocol also allows you to extend the protection granted by foreign registration of your trade mark into the U.S.. If this is done, no filing basis needs to be specified.

Approximately three months after your application has been filed, the application will be assigned to an examining attorney for review. If no issues are raised, the registration procedure can proceed.

Conclusion

Selecting the proper “Filing Basis” for your U.S. trade mark application is a crucial step that can have significant strategic implications for your U.S. business expansion.

If you wish to seek assistance in filing your trade mark in the U.S., please do not hesitate to contact us.

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