One of the most important consideration an applicant should take into account prior to beginning the trademark process is the proper “basis” under which his or her application should be filed. The best way to understand the concept of a “basis” in the trademark context is simply to ask this question: “Have I used my mark in commerce as of the date of filing?”
A trademark application can be filed under either a “use in commerce” (“Section 1(a)”) basis or “intent to use” (“Section 1(b)”) basis. The basic difference between the Section 1(a) and Section 1(b) basis is whether the mark, as of the date of filing, has been used in commerce in connection with the goods and/or services identified in the application. “Commerce” is the act of selling or offering to sell goods or services within a state (intrastate commerce), between two or more states (interstate commerce), and/or between the U.S. and a foreign country (foreign commerce). Further, “use” is determined by 1) the date the mark was first used anywhere, and 2) the date the mark was first used in commerce.
If the mark has been used in commerce prior to filing a trademark application, the proper filing basis is Section 1(a). However, if the mark has not been used in commerce as of the date of filing, and the applicant intends to use the mark in the future, the proper basis is Section 1(b). An “intent to use” the mark means that a person has a bona fide intent to use the mark in commerce, but is not prepared to launch the product or services for which the mark will be used.
If an applicant intends to file under Section 1(b), they should keep in mind that registering a trade or service mark under Section 1(b) requires one more step than a filing under Section 1(a). Therefore, it will likely take more time between the initial filing of the application and the point in which a final determination is made as to the registration of the mark. Further, submission under Section 1(b) requires an additional fee of $100.00 per class of goods included in an application.
Initially, an application filed under Section 1(b) will undergo the same evaluation by the United States Patent and Trademark Office (“USPTO”) as one filed under Section 1(a). From the time of filing the evaluation process takes approximately 4 months. If the USPTO does not refuse the application (based on a “likelihood of confusion” determination) it will publish the mark in the Official Gazette. Publication allows any party that believes they may be harmed by the registration to file an objection with the Trademark Trial and Appeal Board within 30 days.
After publication the process for applications filed under Section 1(b) differs from filings made under Section 1(a). When an application is filed under Section 1(b), no specimen illustrating the proposed mark’s use in commerce is included because the mark has not yet been used in such a manner. Therefore, the specimen must be filed once the mark is in fact used in commerce. Approximately 3 months after publication in the Official Gazette (provided that no objection is made) the USPTO will issue a Notice of Allowance (“NOA”). The NOA indicates that the mark will be allowed to register after an acceptable Statement of Use (“SOU”) is filed. The deadline for filing a SOU or requesting an extension to file a SOU (extensions are granted in 6 month increments, and a total of 5 extensions can be filed) is 6 months after the date of the NOA. If no SOU or extension request is submitted, the mark will be abandoned. Additionally, if the mark is not being used in commerce within the allowable time for filing a SOU, an extension request must be submitted to prevent abandonment. If the applicant is using the mark in commerce in connection with the services listed in the application or NOA, an SOU and the required fee ($100/per class) must be filed. One extension request may be filed with the SOU to provide the applicant time to overcome any deficiencies which the USPTO may later determine exists. Once the SOU is filed, the examining attorney will review it and determine whether the statements contained therein permit registration. Approximately 2 month thereafter, assuming the SOU is approved, the USPTO will issue a registration for the mark.
An applicant should consider that the additional time and grounds for denial of registration under Section 1(b) may create more risk, especially if the applicant is investing in brand development during the pendency of the trademark application. Therefore, it must always be kept in mind, especially when filing under Section 1(b), that a trade or service mark which an applicant has expended resources developing may be denied and its investment forfeited. With that said, the risks should not discourage an applicant. Instead, these risks can be avoided or mitigated with a thorough understanding of the various trademark laws and regulations, and, if appropriate, diligent counsel to formulate a strategic approach and assist in navigating the often times complicated trademark process.