In order for an applicant to file a trademark application, they need to indicate the “basis” under which they are filing. Focusing strictly on domestic trademarks, Section 1 of the Lanham Act 15 U.S.C. §§ 1051 et seq.) (“Lanham Act”) provides two situations under which you can file a trademark application with the United States Patent and Trademark Office (“USPTO”).  This article will examine two types of trademark applications for your domestic U.S. trademarks.

Use in Commerce Requirement: No Squatters

In order for a trademark to be eligible for federal trademark protection in the U.S., it must be (1) used in commerce and (2) distinctive. Focusing on the first element, the U.S. is a first-to-use country, meaning under U.S. trademark law, whoever uses the mark first in commerce is presumed to be the owner of the mark. This is quite different from other countries that work on a first-to-file system, wherein whoever files the trademark application first is presumed to be the owner of the mark. Under a first-to-use system, exclusive rights to trademark protection are awarded to the first to use the trademark in interstate commerce and not necessarily the first to apply for trademark protection. This is not to say you must use a trademark in commerce in order to apply for trademark protection, only that a trademark will not acquire federal trademark protection until it is actually used in commerce.

Given that the USPTO is a federal agency given its powers by Congress, use in commerce is defined as “all commerce which may be lawfully regulated by Congress,” which means commerce between the States and commerce between the United States and a foreign country.

1(a) Used-In-Commerce Application: Keep Your Receipts.

As the name provides, this type of application is available for owners of trademarks who have already used their trademarks in commerce in the U.S. This type of application requires the applicant to submit two important pieces of information: (1) proof of use of the mark in commerce, also known as a specimen and the (2) the earliest first date of use in commerce, also called your priority date. For this reason, it is recommended to keep accurate track of where, when and how you are using your marks in commerce.

1(b) Intent-to-Use Applications: Keep Your Promises & Receipts.

Fear not those who have yet to use their mark in commerce. A 1(b) intent-to-use application is used when a person or entity has not yet used their mark in commerce but has a bona-fide intent to use the mark in commerce at some point in the future. This type of application provides applicants the opportunity to stake their claim in a mark before they actually use the mark. As previously stated though, even though an applicant is able to submit an application, the application will not mature to registration until proof of use is provided. Applicants that apply for trademark registration based on intent to use must use the mark in commerce either 1) before the application is approved for publication,  2) within six months of the Notice of Allowance issue date, or 3) during the extension of time obtained after the Notice of Allowance issue date. Once proof of use is provided to the USPTO, your application automatically transforms to a 1(a) Use in Commerce application.

Choosing the correct filing type is important as there are differences in (1) timelines, (2) costs, (3) protections and (4) requirements associated with each type of filing. If you need assistance in choosing your filing type, please contact us.

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