Authored by: Blake R. Hartz

U.S. trademark applicants must establish both a filing basis and a registration basis. While this may sound straightforward, the distinction between these two concepts and the specific requirements associated with each can be a source of confusion even for experienced brand owners. This guide breaks down the key principles to understand before filing.

Filing Bases vs. Registration Bases

The U.S. trademark system recognizes five possible filing bases. The first is use in commerce under Section 1(a), which applies when the applicant is already using the mark in connection with the identified goods or services at the time of filing. The second is intent-to-use under Section 1(b), which is available when the applicant has a bona fide intention to use the mark in commerce in the near future but has not yet begun actual use. The third is a foreign registration basis under Section 44(e), which allows an applicant to rely on an existing trademark registration obtained in their country of origin. The fourth is a foreign application basis under Section 44(d), which permits an applicant to claim priority based on a foreign trademark application filed within the preceding six months. The fifth is a designation to the United States under an International Registration through the Madrid Protocol, which is covered by Section 66(a).

Although five filing bases are available, only three of them can serve as a registration basis: use in commerce under Section 1(a), foreign registration under Section 44(e), and the Madrid Protocol designation under Section 66(a). This means that applications filed on an intent-to-use or foreign application basis must ultimately convert to another registration basis before the USPTO will issue a registration. The Section 66(a) basis is both a filing and registration basis, but applications cannot be freely converted into or out of that filing system. Understanding these distinctions at the outset is critical for setting realistic expectations about the timeline and procedural steps involved in securing a registration.

Key Requirements for Each Filing Basis

Each filing basis carries its own specific set of requirements. For a use in commerce filing under Section 1(a), the applicant must provide a statement confirming current use of the mark as of the filing date, along with the dates of first use of the mark anywhere and first use in commerce. The applicant must also submit a specimen showing actual use of the mark for each class of goods or services, accompanied by a verified declaration. It is worth noting that “use in commerce” has a specific legal meaning. For goods, the mark must appear on the products or their packaging or certain point of sale displays, and the goods must be actually sold or transported in commerce. For services, the mark must be used in the sale or advertising of the services, and those services must be actually provided in commerce.

An intent-to-use filing under Section 1(b) is comparatively simpler at the application stage. The applicant need only provide a verified statement of a bona fide intention to use the mark in commerce as of the filing date. However, the applicant will eventually need to file a Statement of Use demonstrating actual use before a registration will issue.

For a filing based on a foreign registration under Section 44(e), the applicant must submit a copy of a valid registration from their country of origin, along with an English translation if the registration is in another language. The goods and services identified in the U.S. application must fall within the scope of the foreign registration, and the applicant must include a statement of intent to use the mark in U.S. commerce. If the foreign registration is set to expire before the U.S. registration issues, proof of renewal must also be provided.

A foreign application filing under Section 44(d) requires the applicant to claim priority within six months of the foreign filing date and to provide details about the foreign application, including its filing date, serial number, and country of origin. As with the Section 44(e) basis, the goods and services must fall within the scope of the foreign application, and the applicant must include a statement of intent to use the mark in U.S. commerce.

A Section 66(a) designation includes scope limitations and intent statements similar to the Section 44 bases noted above.

Important Limitations to Keep in Mind

There are several important limitations to be aware of when selecting a filing basis. Applicants cannot combine a use in commerce basis and an intent-to-use basis for identical goods or services within the same application. However, it is permissible to use different bases for different classes of goods or services, or even for specific items within a single class. Additionally, applications filed under the Madrid Protocol as Section 66(a) requests for extension of protection cannot be combined with any other filing basis, and a regular U.S. application cannot be amended to a Madrid Protocol basis.

Choosing the Right Strategy

Selecting the appropriate filing basis is a strategic decision that can significantly impact the trajectory of a trademark application. A use in commerce basis offers the advantage of immediate registration eligibility, provided all requirements are met. An intent-to-use basis provides valuable flexibility for applicants who are still in the process of launching a product or service but want to secure an early filing date. Foreign filing bases can offer important priority advantages for international clients seeking to extend trademark protection into the United States. Consulting with experienced trademark counsel can help ensure that the chosen filing basis aligns with your business objectives and positions your application for the smoothest possible path to registration.