Trademark application

Federal trademark application filing bases

One of the first considerations a federal trademark applicant will have to make is what the filing basis for their application should be.  This article briefly discusses those filing bases for applicants who have decided to file their trademark applications with the United States Patent and Trademark Office (USPTO).

There are five filing bases that you may choose from when drafting your trademark application:

  1. Section 1(a) – use-based application;
  2. Section 1(b) – intent-to-use application;
  3. Section 44(d) – international treaty-based protection (applications);
  4. Section 44(e) – international treaty-based protection (registrations); and
  5. Section 66(a) – Madrid Protocol-based protection.

You can divide these five filing bases into two general types of applications: domestic and international.  Domestic entities generally use Section 1(a) and 1(b) applications.  The remaining filing bases are internationally oriented.  This article assumes familiarity with the stages of trademark prosecution.  For an overview of those stages, read What is an office action? 

Domestic Applications

If you are a United States individual or company seeking trademark protection, you will probably be filing a Section 1(a) or 1(b) application.  The difference is whether you have begun using your trademark in commerce.

Section 1(a) – Use-Based Applications

This filing basis is for trademarks that are in use in commerce at the time their applications are filed.  15 U.S.C. § 1051(a).  It is probably the most common, most straightforward type of application.  Applicants must submit a verified statement confirming use in commerce, and they must submit a “specimen of use” with their applications to show how their marks are being used in commerce.  Importantly, applicants must disclose the dates they first began using their marks in commerce, which establishes their prior rights in their marks.  This right of priority can be crucial in a trademark dispute.

Section 1(b) – Use-Based Applications

This filing basis is for trademarks that are not in use in commerce at the time their applications are filed, but for which an applicant has a bona fide intention to use.  15 U.S.C. § 1051(b).  Applicants must submit a verified statement confirming their bona fide intention to use their mark in commerce.  They will also eventually have to submit a “specimen of use” with their applications to prove that their marks are being used in commerce.

Section 1(b) applications differ from Section 1(a) applications in two important ways.  First, Section 1(b) applications allow trademark owners to test the waters of registrability.  No trademark owner would want to invest in advertising and product packaging for a trademark that the USPTO later deems unprotectable or, maybe worse, likely-to-be-confused with another mark.  Filing a Section 1(b) application allows trademark owners to, in a sense, secure their trademark rights before using or further investing in their marks.  One major clarification to the foregoing sentence: one has no rights to a trademark they have not used, but a Section 1(b) application ensures those rights will be ready and waiting if and when one does use that trademark.

Second, Section 1(b) applications are more expensive than Section 1(a) applications.  Prosecution of Section 1(a) applications is essentially done after they leave the opposition stage.  Section 1(b) applications have additional requirements to fulfill after that stage, however, including specimen of use and affidavit submissions and review.  These additional requirements and prolonged prosecution result in additional USPTO fees that are not required of Section 1(a) applications. 

International Applications

If you are an international company with existing trademark applications or registrations, you may be considering international protection of your trademarks, in which case you will be looking toward Section 44 and Section 66 applications.  These applications allow trademark owners to extend their trademark rights across international borders without the need to file independent domestic applications, which may present legal and financial advantages.  For example, these international applications cannot be challenged for lack of use on or before their filing dates.

Section 44(d) and (e) – International Treaty-Based Protection

Under Section 44(d), an owner of a trademark application in a foreign country can leverage that application to obtain priority filing dates in the United States.  15 U.S.C. § 1126(d).  Among other things, the applicant’s foreign country of origin must be a party to a treaty or agreement with the United States that provides for a right of priority or extends reciprocal registration rights to nationals of the United States.  Where Section 44(d) deals with extending trademark protection based upon foreign applications, Section 44(e) deals with extending trademark protection based upon foreign registrations.  15 U.S.C. § 1126(e).  Every Section 44 application must include a statement of bona fide intention to use the mark in commerce, similar to Section 1(b) applications.  However, no actual use is required for three years.

Section 66(a) – Madrid Protocol-Based Protection

This section allows trademark owners to extend their trademark rights internationally under the Madrid Protocol.  15 U.S.C. § 1141f(a).  Trademark owners must be citizens of countries that are signatories to the Madrid Protocol.  Notable signatories include the United States, the United Kingdom, Germany, China, the European Union, and others (click here for the full list of signatories as of the date of this article).  As described by the World Intellectual Property Organization (WIPO), filing under the Madrid Protocol is advantageous because it allows a trademark owner to file a single international application and pay one set of fees for protection in up to 130 countries.  Trademark owners may find this filing basis more streamlined, more comprehensive, and less costly than a series of Section 44 applications.

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Choosing your filing basis is only one of many considerations that fold into registering for trademark protection. Subscribing to this blog, Trademark Prose, will show you the landscape.  A qualified trademark attorney can help you navigate it.

To file a trademark application with the USPTO, head over to this page: USPTO – Apply Online.

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