When you file an application for federal trademark registration, the TEAS filing portal (Trademark Electronic Application System) will ask you to select a filing basis for your trademark application. There are two available bases for selection: 1(a) or 1(b). Both are derived from the Lanham Act, the statute governing trademarks. When you prepare to file your online trademark application, it can often be confusing as to which basis you should file with.
Section 1(a): A Section 1(a) filing basis means that, at the time of filing, the applicant is already using the proposed mark in interstate commerce (across state lines). Use in interstate commerce means a bona fide use of the mark on the goods or services in the ordinary course of trade. This generally occurs when the mark is affixed to the goods and services and they are shipped or sold in interstate. Your date of use in interstate commerce is your priority date for this type of filing.
Section 1(b): A Section 1(b) basis means that you have not yet used your potential mark in interstate commerce, but that you have a bona fide intention to do so. This filing basis allows you to file the application for your potential trademark before you begin using the trademark on your goods and services.
A Section 1(b) application allows you to stake your claim to that trademark. Your filing date becomes your priority date once the mark proceeds to registration. Once you have actual use of the trademark, you pay an additional fee to file your Statement of Use, alerting the trademark office that you have commenced use of the mark in interstate commerce. Once you file your Statement of Use alleging use of the trademark and your mark proceeds to registration, your priority date (the date you claim use of the mark) becomes the original filing date. For example, let’s say you file an intent to use trademark application for ITU bottled water on May 15, 2018. You begin preparing to use the mark and make your first sale across state lines on October 31, 2018. Even though your actual use of the trademark did not begin until October 31, your priority date for usage is May 15, 2018, the date of your original filing. This means you can exclude others from using a confusingly similar trademark on similar goods from May 15, 2018 onward. If I started selling bottled water under the mark ITU on May 24, 2018, you can exclude me from continuing use of the mark ITU on bottled water once your mark registers because you have priority in that mark due to your intent to use filing.
One more caveat to intent to use applications: you are allotted six months from the trademark office’s Notice of Allowance to begin use of the mark. However, if you cannot commence use in that six month time period, you are entitled to file up to five requests for extensions of time. Each request will incur a filing fee and will allow you six-month consecutive extensions of time. The maximum possible extension time is thirty-six (36) months from the date of the notice of allowance.
If you need to speak with a trademark registration lawyer, call Ritter Spencer today at 214.295.5070 or email firstname.lastname@example.org.