What is a Use-based Trademark Application? How to File Section 1(a) TM App Based on Actual Use

What is a use-based trademark application?

A trademark application must always identify whether the mark has already been used on the goods or services. One common problem is that trademark filers think their mark has been used when, in fact, the opposite is true. The question of whether a trademark has actually been used can be surprisingly technical. So, let’s cover the requirements of a use-based trademark application.

Need to file a trademark application 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.

Section 1(a) vs. Section 1(b): Actual Use vs. Intent-To-Use

Each US trademark application must identify a filing basis. Unless the application is based on a foreign trademark registration, the applicant must indicate whether the mark has been used on the goods or services identified in the application.

To determine whether a trademark qualifies under Section 1(a) basis of actual use, a careful analysis of the following factors should be made prior to filing.

  • What are the goods or services identified in the 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?
  • 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 upfront that are not required in the initial filing of an Intent-To-Use Application:

  1. Dates of first use of the trademark on the goods or services identified in the application; and
  2. 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. An ITU application does not require dates of use and specimens upfront. Eventually, such information must be submitted unless the applicant will rely on a foreign registration basis.

Can you change a use-based trademark application to an Intent-To-Use?

Suppose you file a use-based trademark application with some original specimens. About 6-9 months later, the USPTO rejects your specimens. You search for substitute specimens during the relevant time period, and can’t find anything suitable. Can you change your trademark filing basis?

Yes, you can amend a Section 1(a) trademark application to a Section 1(b). In doing so, you will eventually need to create new specimens and put those specimens into use.

For example, suppose apply for restaurant services and your original specimen of a menu was rejected. You create a new menu showing the mark properly. Before you can submit the new menu as a specimen, you need to make sure the new menu has been used. In particular, actually start using and distributing your new menu to customers in your restaurant.

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 properly filing a use-based trademark application.

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