Use vs. Intent-To-Use
A trademark application filed with the USPTO must designate at least one filing basis. For most American applicants, the choice boils down to one of the following bases:
- Actual Use basis under Section 1(a): This is applicable when the applicant has been using the trademark in U.S. commerce at the time of filing for the goods or services identified in the application.
- Intent to Use basis under Section 1(b): This is appropriate for an applicant who has not yet started using the trademark in U.S. commerce at the time of filing, but has a good faith intent to use the mark. Once the trademark is allowed, a Statement of Use (SOU) along with evidence of such usage (called a “specimen”) must be filed in order to secure the registration. An applicant may file evidence of use prior to the Notice of Allowance by filing an Amendment to Allege Use (AAU). An ITU application tends to cost more than an actual use application because of the costs associated with subsequently filing the evidence of use or requesting extensions of time for doing so.
Amending filing basis from use to Intent-To-Use [From Section 1(a) to Section 1(b)]
A US trademark application that was originally filed based on use in commerce may be amended to substitute Intent-To-Use as a filing basis while retaining the original filing date [see TMEP 806.03(c)]. A filing basis may be added or amended before publication.
In a Section 1(b) Intent-To-Use application, an Amendment to Allege Use may be withdrawn before approval of the mark for publication [see TMEP 1104.11]. However, a Statement of Use cannot be withdrawn once filed [see TMEP 1109.17].
An applicant who owns a foreign trademark application or registration in the applicant’s country of origin may also have the following filing bases:
- Foreign Application basis under Section 44(d): This filing basis is used when the applicant claims priority to a foreign application filed within the past 6 months. To claim priority, the prior foreign application must be the first filed application, and the United States application must be filed within six months after the filing date of the foreign application. The effective filing date is the date on which the foreign application was first filed in the foreign country. If and when the foreign application matures into a registration, the USPTO will require a copy of the foreign registration which, once submitted, will convert the Section 44(d) basis into a Section 44(e) basis.
- Foreign Registration basis under Section 44(e): This applies when the applicant has a trademark registration in a country outside of the U.S. for the same exact mark and for the same scope of goods and services. Once the USPTO allows the application, a Statement of Use and a specimen need not be filed prior to obtaining registration.
When including a Section 44 filing basis, the US mark must exactly match the foreign mark. In other words, the mark in the US application must be identical to the mark in the foreign application or registration, including any colors. While this may seem simple enough, sometimes applicants will want to change the mark for the US filing, especially if graphic elements or extra words are involved. This will not work for a Section 44 filing.
Also, the scope of the identification of goods and services in the US application cannot exceed the scope of the identification in the foreign counterpart. So, while it may be permissible to delete or omit certain goods/services from the foreign filing in the US application, it would be impermissible to include any goods or services in the US application that exceed the scope of the goods/services in the foreign filing. Therefore, if any goods or services have been deleted from the foreign application claimed under Section 44(d), care should be taken to omit or remove such deleted goods/services in the US application.
To establish the applicant’s country of origin, the applicant may be domiciled, incorporated or organized in a treaty country. The applicant may also establish a country of origin by submitting the following written statement for the record: “Applicant has had a bona fide and effective industrial or commercial establishment in Canada as of the date of issuance of the foreign registration.” (See TMEP Section 1002.04).
Lastly, when a foreign filing basis under Section 44(d) or Section 44(e) is included, the US application must also include an ITU basis under Section 1(b). Ultimately, the US application may be based on a Section 44(e) foreign registration alone, and the ITU Section 1(b) basis may be deleted. As a fallback position, however, it may be best to keep the ITU basis and convert it to use under Section 1(a) prior to registration in case the foreign registration basis proves to be defective.
Why keep both ITU and Foreign Registration filing bases [Sections 1(b) and 44(e)]?
For a US application that initially included a priority claim under Section 44(d), it is fairly common for the foreign application to mature into a registration while the US application is still pending. If and when the foreign registration issues, an applicant may add the Section 44(e) filing basis and submit a copy of the foreign registration. This will enable the applicant to delete the Intent-To-Use basis [Section 1(b)] and proceed to registration without having to show use in commerce in the US.
Here’s the question that commonly arises in this situation: Should the applicant still keep the Section 1(b) ITU basis? It depends upon the strength of the 44(e) foreign registration basis. For example, there are certain risks in making a Section 44(e) claim, such as:
- the foreign registration must originate from the applicant’s country of origin;
- the goods/services in the foreign registration must match those in the US application;
- the foreign registered mark must exactly match the applied-for mark in the US.
If any of the above concerns are a practical issue, then it may be wise to keep the 1(b) ITU basis and plan on showing use of the mark in the US.
Can a Section 44(e) foreign registration basis be added later after initial filing?
Yes, an applicant can add a Section 44(e) filing basis after the initial filing and before publication [see TMEP 806.03(g)]. To do so, the applicant must include a copy of the foreign registration with the amendment, and an English translation. This is contrast to a Section 44(d) filing basis which can be added only within six months of the filing date of the foreign application.
What if the foreign priority application under Section 44(d) does not mature into a registration?
If the foreign priority application does not mature into a registration, the applicant has the option to amend to an Intent-To-Use basis under Section 1(b) [see TMEP 806.03(d)]. The applicant will eventually need to show use of the mark in US commerce. The US application will still keep the priority claim.