Trade mark practices vary across the world and the US is no exception. The United States Patent and Trademark Office (the USPTO) offers an open database of trade marks and like the EU database, it publishes all documentation relevant to the mark, exchanged between the Office and the trade mark owner or their representative. 

Until recently anyone could set up an account with the USPTO and file a trade mark application but recent changes to the law, coming into effect in April 2022, will required that any Applicant is ‘sponsored’ (authorized) by a verified US trade mark attorney if they wish to file a US trade mark application.

Once in a position to file a new application, interesting considerations come into play that are more specific to the USPTO’s ways of working. One of those is identifying what filing basis to select.

Filing Basis

The online application process will identify four options for a filing basis, coded as 1a, 1b, 44e and 44d – all of which are representative of Sections in the US Trademark Act (also known as the Lanham Act). The US is one of those countries where an Applicant must provide a signed declaration that the mark is either in use or that there is a bona fide intention to use it in the near future. 

1a

A filing basis based on Section 1a covers an intention to use the mark applied for in the future. An Applicant relying on this basis will have to in the course of the application process show that use has commenced before they can have their trade mark proceed to registration. Once the application is examined and accepted on all other grounds, the USPTO will issue a 6 months deadline by which the Applicant can submit a specimen (an example) of the mark being used in commerce (more on what that entails to follow below). The deadline set by the USPTO to provide them with a specimen of use (SOU) can be extended five times for periods of 6 months (each time requires a separate fee), giving the Applicant a maximum of 3 years to show use of their mark as shown in their application. 

1b

Selecting Section 1b as a filing basis will open a couple of more data entries in the application form. Required will be a date of first use in commerce in the US along with proof of that, and a date of first use in connection with the goods or service provided anywhere in the world. Not every example of use will be found as sufficient. When it comes to goods, for use to be considered as use in commerce, the mark must be shown on the packaging of the product or at the point of sale for the product, either online or in a physical store. If it is a slogan that is not used on pack, it should appear on the promotional shelves or labels in a supermarket, or be incorporated in an online selling page. 

44e

Relying on Section 44e as a filing basis is relying on a foreign registration of the same mark, goods (or part of) and registered owner anywhere else in the world. This however can only be the case if the foreign registration is in a country that is a domiciled country for the Applicant. For example, a US company that has an active registration for the same mark and goods in the United Kingdom, cannot claim foreign registration as their filing basis because they do not have an effective industrial or commercial establishment in the UK, or if the Applicant is an individual, because they may not be a citizen of the UK. 

When the Applicant is relying on a foreign registration in their country of origin, they do not have to show a specimen of use for their mark in the US. Their application can proceed to straight to registration, provided the examination process goes smoothly. Worth noting is that the latter is conditioned on the foreign registration remaining valid until the US application is reviewed for registration. 

44d

Unlike with the trade mark application forms in the the UK and the EU, in the US there is no separate section asking you if you would like to claim priority (e.g. the filing date of your first filing for the mark anywhere in the world if it has occurred within the last 6 months). It is Section 44d (foreign application basis) however that has the same effect – also known as the ‘foreign priority basis’.

An Applicant must select at least one filing basis at the application stage. 

A quick note on Specification

A separate note is beneficial to address the USPTO’s practice in relation to the list of goods and services applied for (the specification). Each item in the specification is independently reviewed in light of any of the claims above, and each item in the specification must be covered by the specimen/s of use submitted where required. Different filing basis can therefore apply for different parts of the specification. For example, the mark might already be used on some of the goods whilst for others there is intention to commence use later on. This is important to note, as an application can only proceed to registration for items for which actual use in commerce can be shown, or which are covered by an active foreign registration in the Applicant’s country of origin.