U.S. trademark filing basis

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.

Actual Use Basis in the USA

 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.

Intent to Use Basis in the USA

 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).

Foreign Registration Basis 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.

Use Cases

Actual Use Basis: Online Retailer on Amazon

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.

Steps Involved:

1. Evidence Submission: The company needs to prepare a specimen of use, such as a screenshot of their Amazon product page showing the trademark in use, with the URL and a date of access.
2. Date of First Sale: They must provide the exact date when they first sold their products in the USA, establishing their claim of "Actual Use."
3. Trademark Application: File the trademark application with the USPTO, including all necessary details about the trademark and the trademark owner.

Intent to Use Basis: Upcoming Business Launch

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.

Steps Involved:

1. Trademark Application: File the trademark application without the need to provide a specimen of use or dates of first sale at this stage.
2. Notice of Allowance: Once the trademark is preliminarily approved, they will receive a Notice of Allowance from the USPTO.
3. Declaration of Use: Within 6 months of receiving the Notice of Allowance, the individual must submit the "Declaration of Use" form, showing evidence of the trademark in use (e.g., a screenshot of the launched website with the trademark) and pay the required fees.

Foreign Registration Basis: French Company Expanding to the USA

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.

Steps Involved:

1. Proof of Foreign Registration: Provide a copy of their current French trademark registration certificate and translate it into English.
2. Trademark Consistency: Ensure the trademark filed in the USA is identical to the one registered in France.
3. Trademark Application: File the trademark application in the USA, stating the "Foreign Registration" basis and ensuring the list of goods/services does not exceed what is covered in the French registration.

For expert guidance and assistance in navigating these options, consider partnering with Bonamark.com. Contact us at [email protected]