When filing your trademark in the USA, you must specify a basis for filing in your application. There are three main bases: the "Actual Use", "Intent-to-use" and "Foreign Registration" bases.
|For trademarks already in use in US commerce, file under the 'Actual Use' basis. This requires not just trademark details, but also a 'Specimen of Use' (like your product photos or website screenshots showing the trademark) and the date of first sale in the USA and globally. Proof of use is essential.|
If you already use your trademark in commerce in the USA on all the products in your application, you can file your trademark under the Actual Use basis.
In this case, in addition to the information regarding the trademark and the trademark owner, you must provide the Specimen of use and the date of your first sale in the USA and in the world. The proof of use is a mandatory requirement.
The Specimen of use can be a photo of your product with your trademark on it, the packaging of your products, a screenshot from a website where you sell your products, which shows that you use your trademark in association with the products/services listed in the application.
|Register a trademark in the USA with an 'Intent-to-use' basis, ideal if you're not yet selling products there. This option doesn't need initial proof of use, but requires a Declaration of Use and fees within 6 months post-approval, extendable up to 5 times.[Extra fees will apply] Without this declaration, the trademark will be abandoned.|
If you haven't started selling your products in the USA, then you should apply on an intent-to-use basis. In this case, you are not required to provide a Specimen of use and the dates of first sale at the moment of filing your mark, but an extra fee will apply.
However, once your trademark is accepted to registration (9-12 months from the filing date approximately), the Office issues a Notice of Allowance which means the beginning of the 6-months period when you should submit those documents and pay the required fees [369$/class in 2023] for filing an additional form called the Declaration of Use.
If you can't submit the Declaration of Use within the first period, you need to request an extension of time. The USPTO will provide you with another 6 months to submit a Declaration of Use, the price for the Extension of Time in 2023 was US$319 per class, including the government fees. In total you can request up to 5 extensions of time.
If you do not submit the declaration of use, your trademark will be abandoned (cancelled).
|If you've registered your trademark outside the USA, consider the 'Foreign Registration' basis for US filing. Just provide your existing registration certificate and its translation into English and ensure the trademark and its product/service range match the foreign registration. This option is cost-effective, especially for those yet to sell in the USA.|
For the applicants who have already registered their trademark outside the USA, there is one more way to get the trademark registered in the county – file the trademark under the Foreign Registration basis. All you need is to provide the certificate of registration of your trademark and file the same trademark in the USA. There is no additional fee for this. However, there are also some pitfalls:
• The base trademark should be registered in the country of your citizenship or incorporation of your company. The base trademark must be valid at the moment of filing and registration.
• The list of products/services should not go over the range of products/services in the foreign registration.
Nevertheless, it may be a good option for those who haven't started selling their products in the USA and are not ready to pay extra charges associated with an Intent-to-use basis.
1. The fees mentioned are subject to change without prior notice.
Scenario: A company has been selling a range of products on Amazon since 2022. They have established a substantial customer base in the USA. The company’s brand logo is displayed on all their products and marketing materials. Given their success and growing market presence in the USA, the company decides to secure their brand by registering their trademark under the "Actual Use" basis.
Scenario: An individual entrepreneur is planning to launch a new online business. They have developed a unique brand name and logo for their upcoming website, which is scheduled to go live in 3-4 months. To secure their brand identity before the launch, they decide to file for trademark registration under the "Intent to Use" basis.
Scenario: A French company, with a well-established brand in France, plans to enter the US market. They have a valid trademark registration in France for the same brand they intend to use in the USA. To leverage their existing trademark rights, they decide to file for trademark registration in the USA under the "Foreign Registration" basis.
For expert guidance and assistance in navigating these options, consider partnering with Bonamark.com. Contact us at [email protected]