Jeffrey Herman, Attorney
Office: (480) 207-5333

What Is The Filing Basis For Your Trademark Application – Use In Commerce Or Intent To Use?

Understanding the filing basis for your trademark application is critical to the success of your registration process. When it comes to filing a trademark application, one of the most important decisions you will make is determining whether you have already used the trademark in commerce or if you have only an intention to use it in the future. This decision will dictate the trajectory of your application and the requirements you must meet to successfully register your trademark. In this blog post, we will explore the difference between “use in commerce” and “intent to use” as the filing basis for your trademark application, and the implications of each.

Key Takeaways:

  • Use in Commerce: To file a trademark application based on use in commerce, you must already be using the trademark in connection with the goods or services listed in the application.
  • Intent to Use: You can file a trademark application based on intent to use if you have a bona fide intention to use the trademark in the future, but are not currently using it in commerce.
  • Importance of Choosing the Right Basis: Choosing the correct basis for your trademark application is crucial, as it affects the timing of your registration and the evidence required to support your application. It’s important to consult with a trademark attorney to ensure you select the appropriate basis for your specific situation.

What Is The Filing Basis For Your Trademark Application - Use In Commerce Or Intent To Use?

Understanding the Filing Basis

If you are considering filing a trademark application, it is important to understand the filing basis for your application. The filing basis indicates the legal basis for filing the trademark application and determines the requirements and timeline for filing. There are two primary filing bases for trademark applications: ‘use in commerce’ and ‘intent to use’.

Definition and Legal Framework

Definition: The filing basis of ‘use in commerce’ refers to the actual use of the trademark in connection with the sale or transport of goods or the rendering of services in commerce. On the other hand, the filing basis of ‘intent to use’ indicates that the applicant has a bona fide intention to use the trademark in commerce in the future.

Legal Framework: The filing basis is regulated by the U.S. Patent and Trademark Office (USPTO) and is an essential component of the trademark application. Understanding the legal framework and requirements for each filing basis is crucial for a successful trademark application process.

Comparing ‘Use in Commerce’ and ‘Intent to Use’

To provide clarity, below is a table comparing the ‘use in commerce’ and ‘intent to use’ filing bases:

Use in CommerceIntent to Use
Actual use of the trademarkBona fide intention to use the trademark
Requires specimen of useRequires a statement of intention to use
Proof of use required before registrationProof of use required before registration

A deeper understanding of the differences between ‘use in commerce’ and ‘intent to use’ filing bases is essential for making the right decision when filing a trademark application. It is important to consider factors such as actual use of the trademark, the requirement for specimen of use, and the timeline for providing proof of use before registration.

Use in Commerce Filing Basis

Despite

The filing basis of ‘use in commerce’ for a trademark application is based on the actual use of the mark in interstate commerce. This means that the mark has been used in connection with the sale or transport of goods, or in connection with the rendering of services, between more than one U.S. state or between the U.S. and another country.

Criteria for ‘Use in Commerce’

Commerce is defined as the exchange of goods, services, or property between people, businesses, or countries. In the context of trademark law, the use of the mark must be bona fide and in the ordinary course of trade, and not made merely to reserve a right in a mark without a bona fide use of the mark.

The use in commerce should be with the goods in the ordinary course of trade, and the use must be genuine and continuing. It should be consistent with the use of the mark on the goods or in the sale of the services, and not made merely to reserve a right in the mark.

Benefits and Drawbacks

The use in commerce filing basis allows the applicant to obtain a registration sooner than an intent to use filing basis, as it bypasses the need to file an allegation of use before the registration could be issued. However, the applicant is required to provide evidence of the use of the mark in commerce as a part of the application process, which can be a burdensome requirement, especially for businesses that are just starting to use the mark.

Criteria for ‘Benefits and Drawbacks’

The use in commerce basis allows an applicant to secure their priority in the mark, prevent others from registering a confusingly similar mark, and gain the benefits of a federally registered trademark, including enforcement rights and the ability to use the ® symbol. However, if the evidence of use is not genuine or the use is not bona fide, it could lead to the cancellation of the registration and expose the applicant to legal risks.

Intent to Use Filing Basis

Not all trademark applicants have started using their mark in commerce at the time of filing. Some applicants may have a bona fide intention to use their mark in the future. For these applicants, the intent to use filing basis provides a way to secure trademark rights before actual use has occurred.

Requirements for ‘Intent to Use’

Any individual or entity that has a genuine intention to use a trademark in commerce may file based on an intent to use. There is no requirement to have already used the mark in commerce at the time of filing. The applicant must have a bona fide intent to use the mark in connection with the goods or services listed in the application. The applicant must also have a specific and real business objective to use the mark.

Advantages and Disadvantages

Intent to use filing basis provides several advantages. It allows applicants to secure priority for their mark while they prepare to use it in commerce. Additionally, it provides a legal basis to ensure the mark is available for use before investing in branding and marketing efforts. However, there are some disadvantages as well. Applicants must eventually use the mark in commerce and submit proof of use to the USPTO. This requirement imposes a strict deadline for proving actual use, which can be challenging for some applicants.

Intent to use also allows applicants to reserve a mark before investing in branding and marketing efforts, but the requirements for proving actual use can be stringent. Applicants must be prepared to provide evidence of use in commerce when requested by the USPTO, and failure to do so can result in abandonment of the application.

Decision Making and Application Process

To successfully file a trademark application, you must carefully consider your choice of filing basis. The decision to use either use in commerce or intent to use as your basis can significantly impact your application process and overall success. It is crucial to thoroughly understand the factors that should influence your decision and the step-by-step process for filing based on your chosen basis.

Factors to Consider in Choosing Your Filing Basis

With use in commerce, you must already be using the trademark in connection with the goods or services provided. On the other hand, intent to use allows you to apply for a trademark before you have actually used it in the market. When making your decision, consider the proof of use required, the timing of your commercial activities, and the flexibility in securing your trademark rights. Additionally, evaluate the costs associated with meeting use requirements and the potential consequences of not following through on an intent to use application. This will help you make an informed decision that aligns with your business goals and needs.

Steps in Filing Your Trademark Application Based on Your Chosen Basis

Decision making is followed by the actual application process. Based on your chosen basis, you will need to gather the necessary documentation and information to support your use in commerce or intent to use claim. For a use in commerce application, you must provide evidence of the trademark’s actual use, while an intent to use application requires a sworn statement of your bona fide intent to use the trademark in commerce. It is essential to ensure that you follow the specific procedures and meet all requirements set by the United States Patent and Trademark Office to avoid any delays or complications in the application process.

Post-Application Considerations and Obligations

Your trademark application has been filed, but the work doesn’t stop there. It’s essential to stay on top of post-application considerations and obligations to ensure the protection and validity of your trademark.

Monitoring and Maintaining Your Trademark

For trademark owners, monitoring and maintaining your trademark after registration is crucial. Regularly monitoring for potential infringement or unauthorized use of your mark is important to maintain the distinctiveness and strength of your trademark. Additionally, it’s equally important to maintain accurate and up-to-date information with the United States Patent and Trademark Office (USPTO) to keep your registration in good standing.

Transition from ‘Intent to Use’ to ‘Use in Commerce’

Obligations when transitioning from ‘Intent to Use’ to ‘Use in Commerce’ include submitting a Statement of Use and evidence of actual use in commerce within a certain timeframe. Intent to Use applicants should be mindful of these deadlines and be prepared to submit the necessary documentation to complete the registration process.

To wrap up

From above, it is clear that the filing basis for your trademark application depends on whether you are already using the trademark in commerce or if you have a bona fide intent to use it in the future. Understanding the distinction between these two filing bases is crucial for the success of your trademark application. Whether you choose “use in commerce” or “intent to use,” it is important to provide accurate and complete information to the United States Patent and Trademark Office (USPTO) to ensure the smooth processing of your application. By carefully considering the filing basis that applies to your situation, you can take the necessary steps to protect your valuable trademark rights.

FAQ

Q: What is the filing basis for a trademark application?

A: The filing basis for a trademark application refers to the legal basis for applying for a trademark registration with the United States Patent and Trademark Office (USPTO). There are two primary filing bases: “use in commerce” and “intent to use.”

Q: What does “use in commerce” mean for a trademark application?

A: “Use in commerce” means that the trademark is already being used in connection with the goods or services identified in the application and the mark is being used in a way that affects interstate commerce. This requires actual use of the mark in the ordinary course of trade, such as on products, packaging, or in the sale or advertising of services.

Q: What is “intent to use” for a trademark application?

A: “Intent to use” means that the applicant has a bona fide intention to use the trademark in commerce in the future but has not yet used it. This filing basis allows applicants to secure a priority filing date for their trademark before they have commenced actual use in commerce, providing a legal basis for future use.

QUIK-MA®K $595

When you need it done FAST and RIGHT.

TRU-MA®K $995

An ounce of prevention is worth a pound of cure