What is a use-based trademark application?
As opposed to an Intent-To-Use application, a use-based trademark application covers a mark that is being used on goods or services. In other words, the applicant is selling goods or services in connection with the trademark. It sounds simple, but the question of whether a trademark has actually been used in commerce can be surprisingly technical. Let’s delve into the requirements of a trademark application based on actual use.
Need to register a trademark based on actual use? Email US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to find out how we can help.
Actual Use vs. Intent-To-Use: Section 1(a) vs. Section 1(b)
Each US trademark application must identify a filing basis. Unless the application is based on a foreign trademark registration, you must indicate whether the mark has been used in connection with the sale of the goods or services identified in the application.
To determine whether a trademark qualifies under Section 1(a) basis of actual use, carefully consider the following questions regarding use.
For goods:
- What goods will be identified in the trademark application?
- Have the goods been sold in connection with the mark?
- Has the mark been sufficiently used on the goods? Do you have acceptable specimens of use for the goods that are not advertising or marketing materials?
For services:
- What services will be identified in the trademark application?
- Have the services actually been rendered to customers or clients?
- Do you have acceptable specimens of use for the services?
What are the special requirements of a trademark filing based on actual use?
A use-based trademark application requires two additional things that are not required upfront in an Intent-To-Use application:
- Dates of first use of the trademark on the goods or services identified in the application; and
- Specimens of use showing usage of the trademark in connection with the identified goods or services.
Regarding the evidence of use, it is not necessary to submit a specimen for every item identified in your application. The USPTO requires at least one acceptable specimen per class of goods or services.
That being said, you must declare truthfully that you are using the trademark on all the items identified in your use-based application. A common problem we see in Section 1(a) applications filed by others is identifying too many goods or services, where many items have not yet been sold.
What if you have not yet used your trademark?
If you have not yet sold goods or services in connection with your trademark, file an Intent-To-Use application.
The initial filing of an ITU application does not require dates of use or specimens. Such information must eventually be submitted unless the applicant will rely on a foreign registration of the same mark.
Can you change a use-based trademark application to an Intent-To-Use?
Let’s consider a hypothetical. Suppose a use-based trademark application was filed and the USPTO rejects your initial specimens. You search for substitute specimens that were in use prior to the filing date, but can’t find anything suitable. Can you change your trademark filing basis? Yes you can.
A trademark application originally based on actual use can be amended to an Intent-To-Use filing basis under Section 1(b). In doing so, you may create and use new specimens and submit those specimens to the USPTO.
For example, suppose you applied for a mark covering restaurant services and your original specimen of a menu was rejected. You may amend your filing basis from actual use to Intent-To-Use and create a new menu showing the mark properly. Before you can submit the new menu to the USPTO as a specimen, Start using and distributing your new menu to customers in your restaurant.
All new specimens must be used before they can be submitted to the USPTO.
Need to file a trademark application based on actual use?
Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you save time and money by filing a proper trademark application.
