When submitting a trademark for federal registration in the United States, an applicant must specify their “filing basis.” There are below possible filing bases:
Use in Commerce [Section 1(a)]
Intent to Use [Section 1(b)]
Foreign Registration [Section 44(e)]
International Registration [Section 66(a)]
Use in Commerce [Section 1(a)]
Applications based on actual use require that the trademark has been put into commercial use in the U.S., and evidence of use and the date of first use must be submitted at the time of application.
How does an applicant prove use? When applying, the USPTO requires submission of evidence showing the trademark in commercial use, which must reflect what consumers see in actual purchasing scenarios. Many trademarks have been refused due to evidence not meeting requirements.
Intent to Use [Section 1(b)]
When a trademark is not yet in use, an applicant can opt for an “Intent to Use” as application filing basis. This basis requires the applicant to have a bona fide intention to use the trademark on the specified goods/services and to submit a statement of use within six months after the USPTO’s issuance of the Notice of Allowance.
If the applicant is not ready within six months after the Notice of Allowance, they can request an extension every six months, up to a total of three years. Sometimes, even when the trademark is already in use, applicants choose to file based on an intent to use, which costs slightly more but offers greater flexibility.
Foreign Registration [Section 44(e)]
As long as the applicant’s country of origin is a member of the Paris Convention or the Madrid Agreement, the application can be filed based on the Section 44(e) filing basis. The application must include a copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country. If the foreign registration is not in the English language, the applicant must submit a translation. However, evidence of use must be submitted during the fifth to sixth year after its registration and at renewal. Additionally, like other applications, trademarks based on foreign registration are still subject to examination and may be refused for various reasons, including conflicts with prior trademarks.
Priority [Section 44(d)]
Section 44(d) provides a basis for receipt of a priority filing date, but not a basis for publication or registration. Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under 1(a), 1(b), or 44(e).
An applicant may choose to combine Section 1 and Section 44 as filing basis. If an applicant properly claims 44(d) in addition to another basis 1(b), the applicant may elect not to perfect a 44(e) basis and still retain the §44(d) priority filing date.
When a 44(d) applicant elects not to proceed to registration under 44(e), the USPTO does not delete the 44(d) priority claim from the Trademark database. Both the 44(d) priority claim and the other basis will remain in the Trademark database.
Some businesses use 44(d) to keep their business plans confidential. The strategy is to first apply for a trademark in another country without a public search system, then apply in the U.S. under 44(d) to secure priority. This approach not only secures six months for business preparations but also ensures trademark protection.
For other businesses that need to conduct market testing before deciding on production or who wish to make defensive registrations for trademark protection, 44(d) is also a very good choice to retain priority.
International Registration [Section 66(a)]
In a 66(a) application, the basis for filing will have been established in the international registration on file at the IB. If an applicant designates the U.S. through the Madrid Protocol , there is no need to specify a filing basis. Nor is there a need to submit evidence of trademark use at the application stage. However, such applications usually receive office actions once they enter the U.S., often requiring adjustment of the goods or services.
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