When we are preparing a federal trademark application, one of the most important things we need to know is whether you are – at the time of the application – actively using the trademark in the marketplace. If you are, we will file a use-based trademark application, also known as a section 1(a) application (corresponding to the section of the law that authorizes this type of application). But in many cases, an entrepreneur wishes to register a mark before he or she has introduced the product or service that the mark represents. As explained below, it is possible to apply to register a mark that is not yet being used. This type of application is known as an intent-to-use (“ITU”) application or a section 1(b) application.
Use-Based (Section 1(a))
We file a use-based application when you are already using the trademark “in commerce.” Using a mark “in commerce” means a bona fide use of the mark in the ordinary course of trade. If the mark is used with goods, it will be deemed to be used in commerce when, for example, it is placed on the goods, on the containers of the goods, displays associated with the goods, or on the tags or labels. Use in commerce also requires that the goods be sold or transported in commerce of a type that can be regulated by Congress, which generally means in interstate commerce or affecting interstate commerce. (Strictly intrastate commerce will not provide a basis for federal registration.) For a mark associated with services, rather than goods, the mark must be used in connection with the sale or advertising of the services and the services must be rendered in commerce. Determining whether a mark has been used in commerce can sometimes be a complicated analysis, we can help you sort it out.
Intent-to-Use-Based (Section 1(b))
If, on the other hand, you have sincere plans to use the mark in commerce but are not yet doing so, an ITU application essentially permits you to reserve the trademark for your exclusive use in your field. You must actually use the mark in commerce, however, before a registration ultimately will be issued. Reserving a mark with an ITU application can be a good option since developing an brand can take time. If you are creating a brand from scratch, you may need time to design logos and packaging, order raw goods and supplies, produce the product to be sold, create a website and the like. An ITU application provides the comfort that some other party will not be granted the rights to your mark while you are hard at work launching your business.
With an ITU application, once the trademark office “allows” your mark, we will have six months to file a Statement of Use, which is a declaration by a trademark applicant that the mark is currently being used in commerce. A governmental filing fee will also be required. Should your mark not be used in commerce by the due date to file a Statement of Use, we can file various requests for six-month extensions of time to file the Statement of Use; a request for a six-month extension can be filed every six months, for up to three years.