Intellectual Property

Do You Want To File A Trademark For A Business You Are About To Begin? Here’s How.

Many times, business owners want to claim the trademark for their business name, before they have officially launched the business to the public. While the USPTO has created strict stipulations around how exactly this must be accomplished, it is in fact possible: by filing what’s called a 1B application.

As a background: In order to file a trademark in the United States, applicants must have  both a “filing basis” and a “registration basis”. A “filing basis” is the basis in the Trademark Act upon which applicants have filed your trademark or service mark application with the United States Patent and Trademark Office (USPTO). A registration basis is the legal basis upon which you can register your mark. These registration bases are defined as 1A and 1B applications: either the business is using their proposed mark (name, logo, or slogan) in commerce, or they have a bona fide, good faith promise that they intend to use the proposed mark within 6 months of filing. A critical factor to distinguish when deciding whether or not your business is ready for a trademark is determining whether or not you fall under one of these two registration bases:

1A Applications:

  • 1A applications are what most business owners have likely heard of. A 1A “Actual Use”Application is the application that may be filed by applicants currently using their mark in commerce in relation to the goods/services the business offers or sells. In order to successfully file this application, the business must be able to provide a specimen with their application (in other words, visual proof. This can be as simple as a screenshot of a website that shows where the consumer may purchase the good or service).

1B Applications 

  • 1B “Intent to Use Applications” are exactly what they sound like: an application filed based upon an intent to use a particular mark. This application may be filed by an Applicant who is not yet using their trademark in commerce, but intends to do so within 6 months of the filing date of the application. 
www.paigehulse.com trademark law for entrepreneurs
www.paigehulse.com trademark law for entrepreneurs

The following, taking directly from USPTO.gov,  breaks down the differences a bit further: 

What are the legal requirements for filing under 1a? You may amend an application to one based on use of the mark in commerce under Section 1(a) only if you have used the mark in commerce in connection with all the goods and/or services listed under this basis as of the application filing date.  To assert this basis, you must provide  the following statement:  “The mark is in use in commerce and was in use in commerce as of the application filing date“; the date of first use of your mark anywhere on the goods or in connection with the services; the date of first use of your mark in commerce on the goods or in connection with the services;  one “specimen” for each class showing how you use the mark in commerce with the goods and/or services, and the following statement:  “The specimen was in use in commerce at least as early as the application filing date;” and verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.”                                    

A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce.  A mark is in use in commerce with services when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.

www.paigehulse.com trademark law for entrepreneurs

What are the legal requirements for filing under 1b? (Taken directly from USPTO website): You may amend an application to one based on a bona fide intention to use your mark in commerce under Section 1(b) if you can provide in good faith the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.” PLEASE NOTE: Although you may file an application based on a bona fide intent, this filing basis is not a basis for registration, so your mark will not be registered until you convert the application to one based on use in commerce by filing a timely and acceptable allegation of use (amendment to allege use or statement of use). 

Short checklist of differences between filing under 1a and filing under 1b:

1a: Reserved for applicants who have already used their trademark in commerce. Must provide specimens and a date of first use. Pros: This is the more common and straight-forward way of applying because you provide proof of use once and can move on with the application process. Cons: You must decide exactly what classes your mark will be classified under as you provide specimens (or you will incur added fees when trying to change/add classes)

1b: Reserved for applicants who have not used their mark in commerce, but have every intention of doing so. Before trademark can be officially registered, applicant must provide specimens as proof of use in commerce. Pros: You can start the process before revealing your mark to the world, helping to stop infringement Cons: Usually has higher costs. To file under 1b, an applicant is forced to provide proof of use at a later date. To do this, an Applicant must either file an Amendment to Allege Use or a Statement of Use after the initial filing. To files these documents, the USPTO charges an additional $100 per trademark, per class of goods. 

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