The Basis for a Trademark Application

*Photo by Dan Moyle is licensed under CC 2.0. *

In order to register a trademark with the USPTO, you must have a legitimate basis for claiming a right to the mark. The two main bases for filing a trademark application are use in commerce and intent to use. The type of application is different depending on the basis for the filing and can have a significant impact on your ability to register your trademark.

Basis For Filing

Your trademark application must state your basis for making the application. Most applications must be based on either your current use of the mark in interstate commerce or your intent to so use the mark in the future.

Regardless of your basis for filing your application, you must use your mark in commerce prior to the USPTO’s agreeing to register it. Filing an intent to use application, however, allows you to get a jump start on the registration process and acquire at least temporary rights to the mark prior to your actually using it.

Consequently, an intent to use application requires additional steps and paperwork prior to the USPTO’s agreeing to register your mark, as you must subsequently demonstrate your use of the mark in commerce. Your mark can be registered as a result of a use in commerce application, however, without these additional steps.

The Use In Commerce Basis

Use in commerce applications must include within them a demonstration of the use of the mark in interstate commerce. This means you must be using the mark to sell goods or services between more than one state or U.S. territory or between the U.S. and another country. (Trademark applications for marks used solely within one state should generally be filed with that individual state, rather than with the USPTO.)

To qualify to register for a trademark on this basis, your mark must appear on the goods being sold or their containers or displays, or, if you are selling services, your mark must be used in the sale or advertising of your services. The mark has to actually be associated with the sale of the goods or services to qualify. You must submit an example—called a specimen—showing your use of the mark in interstate commerce.

Your application must also state the first time you used the mark anywhere and the first time you used the mark in interstate commerce. These two dates can be the same, but if they are different, the first use anywhere must precede the date of first use in interstate commerce.

The Intent to Use Basis

An intent to use application allows you to begin the trademark application process before actually using your mark in interstate commerce. You must, however, have a good faith or bona fide intent to use the mark in interstate commerce, which means you must have more than just an idea.

An intent to use application can preserve your rights to a mark and put the public on notice of your intent to use the mark. It will not, however, preserve your rights forever. You have a limited period of time to demonstrate that you have actually used the mark before your application is considered abandoned.

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Sources:

Protecting Your Trademark: Enhancing Your Rights Through Federal Registration

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See Also:

After Filing Your Trademark Application

Registering Your Trademark