Trademark applicants should receive professional counsel prior to determining the filing basis or bases for their trademark application to the United States Patent & Trademark Office ("USPTO"). See our web page entitled, Determining Which Filing Basis Is Appropriate For Your U.S. Trademark Application, for general information on this subject matter. If your trademark application falls under §1 or §44 of the Trademark Act, you may claim more than one filing basis. It is important to note that you must indicate which goods and services claim which respective basis.
It is possible that all the goods in one international class claim one basis or that certain goods claim one basis while other goods in the same classification claim a different basis. For example, if the applicant is a jeweler currently sell earrings under their brand, but the applicant is taking steps to also sell bracelets under the same brand, it would be noted that earrings claim a use basis under §1(a) of the Trademark Act, while bracelets claim an intent-to-use basis under §1(b) of the Act. This avoids the need for separate trademark applications and takes advantage of the filing date acting as a constructive use date.
If the applicant asserts both use and intent-to-use for goods and services in one trademark application, the application will be published and after examination, a Notice of Allowance will be issued. The goods with a use basis remain in the application and essentially wait until the applicant can file the Statement of Use. The disadvantage to this approach is that the goods and/or services claiming a use basis are delayed until a Statement of Use can be filed for the other goods and services. Considering the significant benefits of registration, some applicants may decide to divide the application. This will allow the goods and services claiming use to move forward to registration. There are additional fees to consider if you decide to divide the application.
Another possibility is that an applicant may assert a §44 basis and also claim either use in commerce §1(a) or a bona fide intent-to-use the mark in commerce §1(b) for the identical goods and services. Although an applicant can assert a use §1(a) and an intent-to-use basis 1§(b) in one application, it cannot be for the identical goods or services. Applicants should be mindful that if use in commerce is claimed in addition to another basis, and the applicant fails to respond to an Office Action or Notice of Allowance pertaining to one of the two bases, the failure will result in abandonment of the entire trademark application.
If an applicant claims priority under §44(d) and also claims a basis under use or intent-to-use, then the applicant can choose not to perfect the §44(e) basis and can still maintain the priority filing basis. An Examining Attorney will typically inquire with the applicant if he wishes to maintain the §44(e) filing basis as a secondary basis. If the applicant wishes to retain the §44(e) basis, then the Examiner cannot publish the application for opposition or register the mark on the Supplemental Register, unless the applicant produces a copy of the foreign registration.
An applicant can amend an application to add or substitute a basis if it is amended prior to the application being approved for publication. If an applicant moves to amend the application to add or substitute a basis after publication, it must be done through a petition to the Director. If the Director grants the petition, and the Examiner accepts the new basis, the application must be republished. However, keep in mind that if an applicant starts using the mark in commerce after the filing date, the applicant can not add or substitute §1(a) as a basis at any time in the prosecution.
When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis. If so the applicant will maintain the original filing date as long as there was a continuing valid basis since the filing date. There are many factors to consider prior to selecting a basis or multiple filing bases, please feel free to contact our office for a courtesy trademark consultation.