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Assigning the Correct Filing Basis to Your Federal Trademark Application: 1(a) Use in Commerce vs. 1(b) Intent to Use

By Neil Salyards, Esq.

An often misunderstood requirement in the application process when applying to register a trademark with the USPTO is selecting the correct filing basis to assign to the application – 1(a) Use in Commerce[1] or 1(b) Intent to Use[2]. For a 1(a) filing basis, 15 U.S.C.A. §1051(a) states “The owner of a trademark used in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director, and such number of specimens or facsimiles of the mark as used as may be required by the Director.”[3] Therefore, a 1(a) filing basis is appropriate when the applicant has used his or her trademark on or in connection with the goods or services in commerce.

For a 1(b) filing basis, 15 U.S.C.A. §1051(b) states “A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by the Director.”[4] Therefore, A 1(b) filing must be used when the applicant has not yet used the trademark on or in connection with goods or services in commerce, but has a bona fide intent to do so in the near future.

It is important for the attorney and client to understand what use in commerce means, and whether the client’s trademark has fulfilled this requirement at the time the application will be filed before determining the appropriate filing basis. There are consequences and requirements attendant with each filing basis, so the appropriate filing basis must be selected based on the current use of the trademark as of the date the application will be filed.

15 U.S.C.A. §1127 defines commerce as “all commerce which may be lawfully regulated by congress.”[5] Although intentionally drafted to lend itself to broad interpretation, this hardly provides clarity for a client or attorney as to whether the trademark in question has been used in commerce for purposes of assigning a 1(a) filing basis. §1127 further defines the term use in commerce as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.

For purposes of this Act, a mark shall be deemed to be in use in commerce--

(1) on goods when--

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce, and

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”[6]

The use in commerce requirement is not entirely difficult to satisfy. For example, if you have created a product and you have your name, slogan or logo on the product, and you transport the goods across state lines with the bona fide intent to use that name, slogan or logo to identify your product, you have engaged in interstate commerce that congress may lawfully regulate, and therefore, have sufficiently met the use in commerce requirement for a 1(a) filing basis. Additionally, a single sale of the product or service to individuals or businesses in multiple states, or from your domicile to another state is commerce that congress may lawfully regulate, and therefore, sufficient for 1(a) use in commerce purposes.

Now, consider the start-up client who has conceptualized a business idea and is early on in the development stage, with no tangible goods or services materials to affix the mark to, and has not engaged in commerce that congress may lawfully regulate. This is when a 1(b) Intent to Use filing basis must be used. This has the effect of reserving exclusive ownership rights to the trademark, and preventing others from using it while completing the development stage and bringing a product or service to market. A 1(b) filing basis tells the USPTO that you have not yet used the mark in commerce, but you have a bona fide intent to do so in the near future, and in the meantime, you want to prevent anyone else from registering it or using it on or in connection with their similar goods or services.

If a 1(b) filing basis is used, the application will not be completed and the trademark will not be officially registered to the Principal Register until the applicant uses the mark in commerce and communicates this to the USPTO through filing either an Allegation of Use or Statement of Use. Which document will need to be filed depends on the timing of the use in commerce in relation to the status of the application.

For more information about this topic, or for trademark questions in general, please contactNeil A. Salyards, Esq. at (303) 284-7827 or nsalyards@feldmann-nagel.com


[1] 15 U.S.C. §1051(a)

[2] 15 U.S.C. §1051(b)

[3] 15 U.S.C. §1051(a)

[4] 15 U.S.C. §1051(b)

[5] 15 U.S.C. §1127. Construction and definitions; intent of chapter

[6] 15 U.S.C. §1127. Construction and definitions; intent of chapter

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