Whenever you file a federal trademark application in the US, you have to indicate the “basis” under which you are filing the application.
If you file a federal trademark application in the US from another country under the Madrid Protocol (as a Request for Extension of Protection), then you don’t need to specify a filing basis because it is done automatically. See the discussion of Section 66(a) below.
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The US Trademark Act (the Lanham Act) defines several situations (several bases) in which you have a right to apply for a trademark in the US. When you file a trademark application, you specify which of these legal bases—which part of the Trademark Act—you are claiming rights under. This is called the filing basis of your application.
The filing basis that you select impacts your rights under US law, as well as the actions and responsibilities you accept in order to register and maintain your federal trademark.
Note that a single trademark application can include more than one filing basis, depending on the circumstances.
The following list discusses each possible filing basis for a US trademark application. The section numbers refer to the section of the US Trademark Act. You must select from these section numbers when you file your application. (Note that Section 1 of the US Trademark Act corresponds to Title 15, Section 1051 of the United States Code.)
Section 1(a): This section is used for a trademark application where the trademark is already being used in commerce in the United States.
Section 1(b): This section is used for a trademark application where the person or company filing the application has an intent to use the mark in commerce in the United States. (This is sometimes called an ITU application, for “Intent To Use.”) Many times an application is filed under section 1(b) rather than 1(a) even when the mark is already being used, because filing under section 1(b) gives more flexibility later in the application process. But this also costs a little more because you must pay another (smaller) government fee when you submit evidence that the trademark is actually being used in commerce. If you submit that evidence at the time you file your application under section 1(a), you don’t have to pay that extra fee.
Section 44(d): This section is used for a trademark application where the person or company filing the application already owns a trademark application for the same trademark (on the same goods or services) in another country, and that application was filed no more than six months before the date that the US trademark application is filed. By using this basis, the person applying for a US trademark can have the benefit of the filing date of the earlier application in another country. (You can also do the same thing going the other direction, if you start in the US and then want to file a trademark application in another country.) The real benefit comes when you file for a trademark in one country, but someone in another country sees what you’re doing and files for that trademark before you do. Using the “priority date” from an application in another country, you can block someone else’s application, even if you actually filed your application after they did.
This section only gives you a priority date, so a trademark owner based outside the US would need to use a Section 44(d) filing basis in combination with either Section 1(a), Section 1(b), or Section 44(e). Section 44(d) isn’t used with Section 66(a) (see below) because applications under 66(a) are automatically tied to a non-US trademark application.
Section 44(e): This section is used for a trademark application where the person or company filing the application already owns a trademark registration in another country. The real benefit of using Section 44(e) is that you don’t need to use your trademark in the US before your trademark can be registered, like you do under Section 1(a) or 1(b). You must have a “bona fide intent” (a real plan) to use your trademark in the US, but you don’t have to prove it before the trademark is registered.
If you use Section 44(e), you have to provide a copy of the registration from the other country (translated, if necessary), before your trademark will be registered in the US.
Section 66(a): This section is used for a trademark application where the person or company filing the application already owns an International Registration through the World Intellectual Property Organization, and now they want to have that registration extended so that they have trademark protection in the US. Having the International Registration speeds up the process, and (like Section 44(e) applications), you don’t have to use your trademark in the US before it can be registered.
Combinations, Divisions, and Changes
Within a single trademark application, you can use a combination of multiple filing bases in several ways. For example, you could specify a filing basis of 1(a) for some goods in your application, and a filing basis of 1(b) for other goods within the same application. Or, as discussed above, an application might use 1(b) for an intent to use the mark on certain goods in the U.S., but also use 44(d) to claim priority based on an earlier application in another country.
In some cases, you may need to divide a trademark application into two or more separate applications. For example, suppose you filed an application with some goods under Section 1(a) (trademark already used in commerce) and other goods under Section 1(b) (intent to use the trademark in commerce, but not yet doing so). Later on, you discover that it’s going to be some time before you will use the trademark on the second group of goods, but you don’t want to wait until then to have the trademark registered. You can divide the application in to two applications. The application based on Section 1(a) can then be registered (assuming everything else is in order), while the Section 1(b) application waits until you’re able to file evidence of using the mark on those goods.
You can also change the filing basis after you first file your application. Whenever you file a trademark application under Section 1(b), it must be eventually changed to Section 1(a) before it can be registered. That is, you must actually use your trademark in commerce before it can be registered, unless you elect to use Section 44(e) or 66(a). Also, if you make a mistake, or just change you mind, you can often change the filing basis to something else, as long as you have the facts to support the change–and pay any required fees!