Trademark registration basis
There are only two bases for a registering a trademark in the US:
- use in US commerce [Section 1(a) – see TMEP Section 900];
- foreign registration [Section 44(e) – see TMEP Section 1004].
A US trademark application cannot mature into a registration without at least one valid registration basis.
Since a Section 1(a) use in commerce may also serve as a filing basis, it is helpful to keep the distinction clear between a filing basis and a registration basis.
How does a registration basis differ from a filing basis?
Upon initial filing, a US trademark application must identify at least one filing basis. In addition to the two bases above, other filing bases include:
- Intent-To-Use [Section 1(b)]; and
- Foreign priority claim [Section 44(d)].
A filing basis serves as the statutory right for an applicant to file a US trademark application. It’s the answer to the question: Why is the applicant entitled to file a US trademark?
A registration basis, on the other hand, answers the question: Why is the applicant entitled to a US registration of the mark applied for?
What is a Section 1(a) use registration basis?
If an applicant has adequately shown use in US commerce of the mark on the goods and/or services identified in the trademark application, then the applicant will satisfy a necessary condition for registration of the mark [see TMEP Section 901]. Note that usage of the mark is not the only condition for registration. There are other critical factors (e.g., no likelihood of confusion, not generic or merely descriptive, etc.).
What is a Section 44(e) foreign registration basis?
An applicant can bypass the requirement of showing use in US commerce by relying on a foreign registration for the same mark with the same scope of goods and services. Keep in mind that an applicant seeking to rely on a foreign registration from the outset must still allege an Intent-To-Use (ITU) filing basis upon the initial filing of the trademark application.
While the scope of goods and services in the US application cannot exceed that of the foreign registration, the scope in the US application may be lesser than the foreign registration’s scope (e.g., the US application may identify fewer goods and services than those in the foreign registration).
When can a foreign registration basis be added?
It is preferable to add a Section 44(e) foreign registration basis prior to publication of the mark. After publication or the issuance of a Notice of Allowance, the applicant must file a petition to the Director to allow the examining attorney to consider the amendment [see TMEP Section 806.03].
If the applicant has a counterpart foreign application for the same mark that is approaching registration, then the timing of adding the foreign registration basis will obviously depend upon the registration date of the foreign mark.
When an applicant adds Section 44(e) as a registration basis, the applicant must file a copy of the foreign registration and an English translation if the foreign registration is not in English. If such an amendment is filed before publication, the applicant must also indicate if they’re still relying on the Section 1(b) Intent-To-Use or if the Section 1(b) basis should be replaced with the foreign registration.