In the United States, registering a trade mark involves several important considerations, one of which is selecting the appropriate filing basis. The filing basis determines the legal foundation upon which the application is submitted to the United States Patent and Trademark Office (USPTO). Each basis reflects a different stage in the trade mark’s use and the applicant’s intentions regarding its future use. Here are the primary filing bases recognized by the USPTO:
- 1(a) – Use in Commerce: This basis is used when the applicant is currently using the trade mark in commerce, meaning the mark is already being used in connection with the goods or services specified in the application. The applicant must submit a specimen (a real-life example) showing the mark as it appears in use.
- 1(b) – Intent to Use: If an applicant has a bona fide intention to use a trade mark in commerce but hasn’t yet used it, they can file based on an intent to use. This basis allows applicants to reserve rights to a trade mark before actual use begins. After initial approval, the applicant must submit evidence of use before the trade mark can be registered.
- 44(e) – Foreign Registration: Applicants who have already registered the same trade mark in their home country or another foreign country may apply for registration in the US under this basis. The application requires proof of the foreign registration and a declaration that the mark is in use in the foreign country.
- 44(d) – Foreign Application: Similar to 44(e), this basis allows applicants who have filed a foreign application (which meets certain requirements) to claim priority in the US. The applicant must file within six months of the foreign application and submit a certified copy of the foreign application and a translation if not in English.
- 66(a) – Madrid Protocol: Through the Madrid Protocol, foreign applicants can seek trade mark protection in the US by designating that country under an international application via the World Intellectual Property Office (WIPO). By filing this way, applicants filing into the US do not need to prove use of the trade mark prior to it being granted protection but they must sign a declaration of intention to use the trade mark in the US at the time of designation. Proof of use is only required 5 years after the registration date in the US.
Choosing the correct filing basis is crucial as it determines the timeline, requirements, and potential challenges in the trade mark registration process. Each basis has specific documentation and procedural requirements that must be carefully followed to secure and maintain trade mark rights effectively.
If you are intending to expand your trade mark protection to the US, get in touch with one of our team to help you decide the best option for your business.