January 23, 2020,

Trademark Application Filing Basis: Use or Intent to Use?

Rapper Cardi B filed a trademark application to register her catchphrase “OKURRR”. Media personality Kim Kardashian West applied to the U.S. Patent & Trademark Office (USPTO) to register “KIMONO SOLUTIONWARE” as a trademark for her line of shapewear. Professional basketball star and entrepreneur LeBron James recently filed a trademark application to register “TACO TUESDAY” for use in connection with marketing and advertising services. Singer Lizzo recently filed a trademark application to register “100% THAT BITCH”. What do all of these trademark applications have in common? All of the above applications were filed earlier this year and they were all filed on an intent to use basis. Trademark applications can be filed on two different filing bases: actual use or intent to use.

Use or Intent to Use-Which one should you choose? If you are already using your trademark in interstate commerce on all of the goods and services listed in your trademark application; then the proper basis for your application is current use or section 1(a). If you are not currently using your trademark in commerce, but you have a bona fide intent to do so within the next 3-4 years, the correct filing basis for your application is intent to use or section 1(b). Why is this important? In the U.S., a trademark applicant must provide evidence that the mark is being used in commerce in connection with the goods and services listed in the trademark application before a trademark can be registered. In other words, if there is no proof that the mark is being used in commerce, the trademark will not be registered.

The Use in Commerce requirement: This requirement of “use in commerce” is unique to the United States. In other countries, it is possible to obtain a trademark registration for a word, slogan, symbol or design, that is not being used at all (in commerce or otherwise) in connection with any goods or services. However, in the United States, use in commerce is an essential requirement in order for the mark to meet its purpose as a designation of the source of goods or services. As a result, the applicant has to provide proof to the USPTO as part of the trademark application process that the mark is being used in connection with the goods and services listed in the trademark application, before a trademark can be registered. The requirements for showing proof of use in commerce depends upon whether the mark is being used in connection with goods or services. The type of evidence required to show use in commerce for tangible goods or products are different from the type of evidence required to show use in commerce for services. In addition, the evidence provided must match the goods and services listed in the trademark application.Choose wisely. The filing basis of your trademark application can affect the time and the cost required to register your trademark. Filing on an intent to use basis means a longer application processing time and additional filing fees. However, an applicant may have to file on an intent to use basis if no acceptable evidence of use in commerce is available at the time the trademark application is filed. There are also strategic reasons for using a particular filing basis. Choosing the correct filing basis is one more reason why you should retain the services of an attorney skilled in trademark law before filing your federal trademark application.