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Trademark Filing

November 9, 2021

What is a “filing base”?

A “filing basis” is the basis on which your trademark or service marks application has been filed with the United States Patent and Trademark Office. An application must contain one or more filing bases. Each “filing base” has its own requirements and must be satisfied before a trademark, service mark or other trademark can be registered.

Basis for application filing

It is necessary to specify the legal basis for federally registering your trademark. This is called a filing basis. There are many filing bases. You must meet all legal requirements to choose the one you prefer. Most common are intent to use and use in commerce.

You can choose from four bases when you submit your application

  1. Use of your mark in commerce (under Trademark Act Section 1(a)) – You are using your mark in commerce currently with your goods or services.
  2. Intent to Use Basis (under section 1(b)), you have an actual intention to use your mark for commerce with your goods or services in the near future.
  3. Foreign registration basis (under section 44(e),) you have a foreign registration for the same mark that you use to identify the same goods or services in your country of origin.
  4. Foreign application Basis (under Section44 (d)) If you have an earlier-filed international application, it must be filed within six months of the U.S. application. This applies to foreign applications that were filed within six month of the U.S. application. It must contain the same mark and the exact same goods or services. This basis is also known as a “foreign priority base” since you want a priority filing date for your U.S. applications that is the same day as the foreign application filing.

An acceptable filing basis is not enough. You also need to establish a Registration Basis. This legal basis will allow you to register your trademark. There are two bases for registration: use in commerce or foreign registration. Before your mark can be registered, you need to file an application that is based on the use of the mark in the immediate future or on a foreign application.

Use in Commerce Basis

An application may be amended to include the mark in commerce. However, you must have used this mark for commerce with all goods or services that are listed under this basis at the date of filing. This basis must be established by providing;

  1. The following statement:  “The mark is in use in commerce and as of the application filing date it was in use in commerce;”
  2. The date of the first use of your mark anywhere in connection with the goods and services;
  3. The date you first used your mark in commerce on the goods or in connection with the services; 
  4. Each class should have a “specimen” showing how the mark is used in commerce with the goods or services. the following statement is made: “The specimen was in use in commerce at least as early as the application filing date;”
  5. Verification, in an affidavit or signed declaration of the statements above and dates of use.

The mark is considered to be in use in commerce with goods when (1) it is placed on the goods, packaging, or displays (including webpage displays) and (2) the goods actually are being transported or sold in commerce. The mark is used in commerce with services when (1) it is used in advertising or selling of the services and (2) the services are being rendered in commerce.

Intent to use

An application may be amended to reflect a bona fide intent to use your mark for commerce. If you can provide the following statement, verified along with an affidavit.

The applicant has a bona fide intention to use this mark in commerce. As of the application date, the applicant had a bona fide intention to use the mark in commerce. While you can file an application on the basis of a bona fide intention, it is not a basis to register. This means that your trademark will not be registered until you convert the application to one based upon use in commerce. You must submit a timely and acceptable allegation or statement of use.

Foreign registration basis

If you provide the following, you can amend application to a foreign registration basis:

  1. A copy of your foreign registration, the same mark from your country of origin (the country where you are domiciled or incorporated, or if you are an individual, in which you reside, or you have a bona-fide and profitable industrial or commercial establishment). A true copy, photocopy or certified copy of the document you received from your country of origin or certified document issued by your country of origin’s intellectual property office must be included. The foreign registration must be valid at the time that the USPTO issues registrations based on your foreign registry. You must provide evidence that your foreign registration is valid and current at the time of registration in the United States.
  2. An English translation for the foreign registration. The translation should be signed by the translator.
  3. Listing of goods and services that does not exceed the scope for the goods or services listed in the foreign registration.
  4. The following statement is verified under an affidavit, signed declaration. The applicant has a bona fide intention to use this mark in commerce. As of the application date, the applicant has real intention to use the mark.

Your “country of origin” must also be a party to any convention or treaty related to trademarks or extend reciprocal registration rights for nationals of the United States.

Foreign application basis

An amendment to an application can be requested for a priority filing date. This is based on a foreign application you have filed earlier for the same mark, the same goods or the same services. This basis, also known as a “foreign prior basis”, allows you to receive an earlier effective filing date for U.S. applications that is the same date that the foreign application filing date.

This basis must be established by you providing:

  1. A timely “claim for priority,” which is a claim of prioritization that was asserted in the U.S. Application within six months from the date of the foreign filing.
  2. The file date, serial number and the foreign nation of the first foreign application.
  3. A statement that the U.S. request is based on a previous regularly filed application in the foreign country.
  4. Listing services and goods that is not beyond the scope of the foreign application.
  5. The following statement is verified under an affidavit, signed declaration. The applicant has a bona fide intention to use this mark in commerce and intends to use it as of the application filing date.

Your “country of origin” is the country in which your domicile, incorporation, or organization occurs, if you are a business or individual. The country where the foreign application was filed must also be a signatory to an international treaty with the United States, which provides priority rights or extends reciprocal rights that priority to U.S. citizens. This basis allows you to file an application and get a priority filing date. However, it does not give you a registration basis. However, you will need to create a registration base such as a use-in-commerce basis and/or a foreign registration basis.

Each of the four filing bases requires certain statements to be “verified”. For example, for a use-in-commerce basis, dates and specimens must be provided. Statements made in an application to the USPTO must be true and made with knowledge about the penalties of perjury under US law. Verifying a statement is when you swear to it, either under oath, in a notarized statement affidavit or written and signed. This declaration states that you have been advised that false statements or the like could result in the cancellation of your application. Also, that all statements that are based on information or belief are true.

Use in commerce vs. Intent to use

While “use in commerce” and “intent to utilize”, are the two types of filing basis, they differ.  

Use in commerce

Your trademark may be used in commerce to sell or transport your goods outside of your state, or provide services to customers living in other states.

You might, for example, grow wheat in Kansas and then sell it to buyers in Massachusetts and Mexico. You might also offer website design services to customers in Georgia or Guam from your Oregon home. You will need to prove that your trademark is being used in commerce in order to register it. You will need to provide a specimen of how you use your trademark. Also, you will need to include the date that you used your trademark in commerce as well as the date it was used anywhere else.

Intent to Use

Intent to Use means that although you have not yet used your trademark in commerce it is likely that you will within the next three to five years.

You might be planning to sell jewelry but are only at the point where you can source your materials. However, you haven’t yet started selling or making jewelry. You might be currently providing personal training services to clients within your state. However, you will be expanding your services into neighboring states in the next 12 months. While you can apply for a trademark registration on an intent-to use basis, it is not possible to actually register your trademark until you have evidence that your trademark has been used in commerce and the appropriate TEAS form are filed.