When a technology startup company, entrepreneurs, and other businesses begin the trademark or brand selection, adoption, and registration process, a federal trademark application filing in the United States Patent and Trademark Office (USPTO) may be a highly advantageous step in the company’s brand protection strategy. But the USPTO Trademark Office provides several options for federal trademark application filing, all with the same objective and goal in mind, to register a trademark in the USPTO database and enjoy the benefits of federal trademark registration in the United States.
Difference Between Use-in-Commerce Section 1(a), and Intent-to-Use Section 1(b) Trademark Application
The USPTO divides all federal trademark applications into two categories. One category is the Use-in-Commerce Application, also known as a UIC Application, or a Section 1(a) Application. The other category is an Intent-to-Use Application, also known as an ITU Application, or a Section 1(b) Application. There are several distinctions between these types of federal trademark applications, and the decision to select one or the other involves a myriad of legal and business considerations.
The black letter law on Federal Trademark Applications requirements in the United States Patent and Trademark Office with respect to Use in Commerce Applications and Intent to Use Applications are as follows:
Use-in-Commerce Basis – § 1(a)
Filing under a Use-in-Commerce Basis involves filing under Section 1(a) of the Trademark Act. This basis means that the owner is currently using that mark in commerce and the priority date of the application will be the mark’s first use in commerce.
15 U.S.C. § 1051(a), better known as Section 1(a) of the Trademark Act of 1946, sets out the requirements for a brand owner to file a trademark application under a Use-in-Commerce Basis. The applicant must:
- Submit a verified statement that the mark is in use in commerce;
- Specify the date of the applicant’s first use of the mark anywhere on or in connection with the goods or services;
- Specify the date of the applicant’s first use of the mark in commerce; and
- Submit one specimen for each class, showing how the applicant uses the mark in commerce.
Intent-to-Use Basis – § 1(b)
Filing under an Intent-to-Use Basis will be a Section 1(b) filing. To file under this Section, a brand owner must demonstrate a clear intent to use their mark in commerce in the near future.
15 U.S.C. § 1051(b), or Section 1(b) of the Trademark Act of 1946, sets forth the requirements for a brand owner to file a trademark application under an Intent-to-Use Basis. The applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce. If the verified statement is submitted after the initial filing of the application, the statement must also state that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.
Prior to obtaining registration, the applicant must follow up with a filing of an Allegation of Use. This can be either an “amendment to allege use” under 15 U.S.C. § 1051(c) or a “statement of use” under 15 U.S.C. § 1051(d) that demonstrates that the mark is in use in commerce. This must include dates of use, the filing fee for each class, and one piece of evidence demonstrating use of the mark for each class.
The Benefits of Intent to Use Federal Trademark Applications
There are certain benefits to a brand owner filing under § 1(b) of the Trademark Act. The most important of which is that filing under § 1(a) requires a showing that the mark has actually been in use in commerce, while a § 1(b) filing does not.
This is important to technology startups with a new product or service that is pre-launch because if a similar mark already exists, filing under § 1(a) may expose the new applicant to trademark infringement liability. It is essentially an admission that the alleged infringing mark has been used in commerce and that can be used against the brand owner filing the application. § 1(b) filings make no such admission. The brand owner has not shown any actual use in commerce, which is a requirement for trademark infringement liability.
Entrepreneurs, technology startups, and brand owners considering filing Use-in-Commerce Section 1(a), and Intent-to-Use Section 1(b) Trademark Application are well-advised to consult with an experienced technology trademark lawyer in Los Angeles to determine which federal trademark application basis is most beneficial to their brand protection strategy.