When applying for US trademark protection there are 4 types of filing bases you can choose from. Note that in the US trademark system, actual use of a mark is paramount as it is a “first-to-use” system. This is unlike many trademark systems in the world which are “first-to-file” systems, meaning rights begin with the the application date where that application is subsequently registered.
While proof of use of an unregistered mark (“common law” rights) would supersede registered trademark rights, proving that use can be difficult and costly, and the resulting protection may be geographically limited. That’s why trademark registration is still a key part of a successful enterprise’s IP strategy, providing a great degree of certainty and streamlining future enforcement procedures.
Section 1(a) – Requires proof of use of the mark in US commerce. Click for timeline.
A Section 1(a) filing requires the applicant to be using the applied for mark in commerce as of the date of filing, and the applicant will need to submit proof of use in commerce as part of the application. Additionally, the applicant is required to sign a declaration that the applied for mark is being used for the goods/services in the application. False statements jeopardize the validity of the application as well as the registration if one is issued.
Section 1(b) – Requires genuine intent to use mark and additional USPTO fees. Click for timeline.
A Section 1(b) filing is similar to the 1(a) filing above except that the applicant submits a declaration that it has a bona fide intent to use the mark in commerce. A 1(b) filing is used for companies who have decided on a product name and would like to reserve it until they actually begin using it on the market. In a 1(b) filing, the USPTO examines the application until the last stage, and then issues a Notice of Allowance (NOA) instead of a registration certificate. The applicant has 6 months from the date of the NOA to submit its Statement of Use (SOU) with an additional $100 USPTO fee per Class. If the SOU is accepted, a registration certificate will be issued. Up to five 6-month extensions for filing an SOU are available with a $150 USPTO fee per Class per extension.
Section 44(d) – Application with non-US trademark application. Click for timeline.
A non-US trademark application may be used as a basis for a US application within 6 months of the foreign filing. Only the goods/services in the foreign application may be applied for in the US and additional goods/services must be filed under 1(a) or (b). Once the foreign registration is issued, the USPTO will verify if the goods/services in the registration match those in the 44(d) application. While an advantage of a 44(d) filing is that the applicant does not need to show use in commerce to acquire a registration, it will need to be shown under Section 8 and 8/9 renewals (between 5-6th and 9-10th anniversaries of the registration). It is important to note that without use, a registration under Section 44(d) is unenforceable without use.
Section 44(e) – Application with non-US trademark registration. Click for timeline.
A non-US trademark registration may be used as a basis for a US application, and the registration must be provided to the USPTO at the time of filing. Like the 44(d) basis above, proof of actual use is not required as part of the application, but is required for Section 8 and 8/9 renewals. Only the goods/services listed in the foreign registration are eligible for US registration under 44(e), and additional goods/services must be applied for under 1(a) or 1(b). Note that foreign registrations do not guarantee US registration under 44(e), as there may be conflicting prior marks on the US register as well as US law which may not permit registration of the mark.
The Madrid Protocol is an international treaty which simplifies the process for trademark holders in the signatory countries to acquire protection in other Madrid Protocol countries. The holder of a non-US application or registration may apply for an extension of protection in the US under Section 66(a). Like 44(d) and (e) filings, no proof of use is required at the time of application. However, the USPTO Trademark Trial and Appeal Board (TTAB) in recent years has found favor for arguments that a 66(a) registration is subject to cancellation for non-use, even before maintenance filings are due. Note that there is a statutory presumption that 3 years of non-use is tantamount to trademark abandonment.