Assigning a Filing Basis for Trademark Registration Goods and Services

If you are new to this series, then start here to review all of the steps for filing a trademark application electronically. After choosing your description of goods or services for your trademark registration, you must then assign the filing basis for your application.

Your filing basis for this application only relates to the specific goods or services that are claimed in the application. You may assign a different filing basis for different goods or services that are in your list for each international class.

In other words, you must tell the Trademark Office whether your mark is already “in use” in interstate commerce or not with respect to each of the goods or services. If the trademark is not yet in use for a particular goods/service, then you will assign a Section 1(b) filing basis, which means you have “intent to use” the trademark.

Video – Trademark Application Filing Basis

– produced by the U.S. Government

Section 1(b) Filing Basis

If you are not yet using your trademark in selling your product or service, choose 1(b). For 1(b) applications, you must later file a Statement of Use for your trademark application using a separate form before you can obtain a registered trademark. You can file the statement of use electronically using the Trademark Electronic Application System TEAS, using a process similar to electronic filing of your original application for trademark registration.

When you file the Statement of Use, you will submit specimens of your use to the Trademark Office. The USPTO filing fee for the Statement of Use is $100 and must be filed within 6 months of a notice of allowance. Many companies file first under section 1(b) with intent to use in order to gain an early priority filing date for the mark. Filing before use, allows a trademark applicant to test the water for the availability of the mark and reception of the mark by potential adversaries of trademark registration as quickly as possible.

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Section 1(a) Filing Basis

If the trademark you want to register is already in use within commerce for a particular goods or service, then you will probably want to assign a Section 1(a) filing basis to obtain a trademark registration more quickly. Some people still choose to file under Section 1(b) for strategic and competitive reasons that are beyond the scope of this post.

Filing under Section 1(a) requires an oath that you are using the trademark in interstate commerce at the time of filing the trademark application. The veracity of this oath is important, as seen in the USPTO warning that a trademark registration is subject to cancellation for fraudulent statements.

Interstate commerce means that you are using the mark for goods and services in a way that affects commerce among more than one state. Today, with the advent of the internet, this can be very easy for many businesses through a web presence.

In my example for ConceptSell, I have selected section 1(a) as the filing basis, which means that I claim the mark is already in use in interstate commerce. Because I have selected the 1(a) filing basis, I must attach a valid specimen of use to the application.

After you assign the filing basis, the goods/services form will show the filing basis in the right hand column of the table for each class of goods and/or services that you have chosen. If you are filing in more than one class of goods and services, then you may assign different filing basis according to your prior use of the mark.

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Review carefully and make sure you are happy with your selection of goods or services and filing basis before continuing the trademark registration process. Next, click the Continue button shown in the USPTO screen.


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