A successful trademark application must fulfill the statutory requirements for at least one of the five bases for a trademark to be granted by the Unites States Patent & Trademark Office. Many trademark applicants choose to file a Trademark Electronic Application System Plus (TEAS) application since the filing fee is reduced to just $275.00 per International Classification. In addition to paying the filing fee, the application must satisfy the bases requirements in effect at the time of filing. A TEAS application will be rejected if the bases for the filing are not clearly identified and the conditions are not met. However, the examining attorney assigned to review the application at the U.S. Patent & Trademark Office will often advise an applicant why the application does not conform to the TEAS Plus requirements. Additional time can be granted for the applicant to correct any deficiencies in the first Office Action.
A trademark is a name, logo, slogan, sound, or motion which when used along with the sale of a good or service, serves as a source identifier and distinguishes the owner of the trademark from its competitors. In the event that the trademark is not yet used in commerce, applicants may apply for a trademark under an Intent-To-Use designation, asserting that while the applicant is not yet using the trademark in commerce, applicant intends to use the trademark in commerce in the future. To move the intent-to-use trademark to a full-fledged trademark, applicant must submit a declaration of a statement of use, along with a “specimen” which demonstrates that the mark is in fact being used in commerce. If the specimen is accepted and the USPTO trademark examiner does not identify any procedural or substantive issue with the application, the trademark will register.
FILING A USE-BASE APPLICATION UNDER §1(A) OF THE TRADEMARK ACT (15 U.S. C. §1051(A))
A (15 U.S. C. §1051(A) is sometimes referred to as a “use-based application.” A successful use-based application requires the applicant to provide the U.S. Patent & Trademark Office with a verified statement to declare that the trademark has been used with the goods or services identified in the application in a commercial capacity at least as early as the filing date. Including the first date of the use of the trademark in commerce with the associated product or service is critical to the success of the application.
If an applicant is uncertain when the product was first used in commerce, the applicant should rely upon the guiding principle of “commerce.” Commerce is defined by the U.S. Patent & Trademark Office as any type of business activity that can be regulated by the United States Congress. Commerce can include the exchange of goods or services between states, territories, or foreign countries. An application for a trademark will not be granted by the U.S. Patent & Trademark Office if the exchange of goods and services is ONLY conducted within a single state – simple intrastate commerce will not meet the statutory requirements for a trademark to be granted under 15 U.S. C. §1051(A).
When filing a use-based application for a trademark, the applicant must demonstrate the use of the trademark for each International Class by attaching specimens to corroborate the verification.
RECEIVING A PRIORITY FILING DATE UNDER §44(D) OF THE TRADEMARK ACT (15 U.S. C. §1126(D))
When a trademark application filed with the U.S. Patent & Trademark Office is the earliest application filed anywhere in the world for a specific trademark, then the US filing date can be used as the “priority date” for a foreign trademark application – if that foreign application is filed within a certain time period. When filing under 15 U.S. C. §1051(B) for a priority filing date, the claim of priority must be filed no later than six months after the filing date of the foreign application. Furthermore, the application must clearly identify the filing date, the serial number, and the country where the first foreign application was filed. Finally, a verification that the applicant has a bona fide intention to use the mark with the goods or services in commerce must accompany the trademark application when filing under 15 U.S. C. §1051(B). The applicant is still required to establish basis under §1(a), §1(b) or 44(e) of the Trademark Act before the application can be approved for registration.
FILING A TRADEMARK APPLICATION BY COUNTRY OF ORIGIN UNDER §44(E) OF THE TRADEMARK ACT (15 U.S. C. §1126(E))
If a country is a party to a convention or treaty in which the United States is either a party or extends reciprocal registration rights to United States citizens or nationals, a trademark application can be submitted under §44(e) of the Trademark Act. A copy of the registration from the applicant’s country of origin must include a verified statement that the trademark will be used in commerce with the goods or services included in the application. This declaration is mandatory – even if commercial use is only alleged.
EXTENDING INTERNATIONAL REGISTRATION PROTECTION UNDER §66(A) OF THE TRADEMARK ACT (15 U.S. C. §1141F(A))
15 U.S. C. §1141F(A) §66(A) of the Trademark Act allows an applicant to extend its trademark for United States protection pursuant to Section 44 of the Trademark Act. In order to satisfy the requirements for an international registration under the Trademark Act, the applicant must attach a verification of a bona fide intention to use the mark in commerce with the goods or services set forth in the application.
The foundation for a solid trademark prosecution rests on selecting the proper filing basis. There are myriad statutory requirements to consider alongside all the strategic implications of the applicant’s intentions. Lawyers experienced in trademark law can incorporate an applicant’s goals into a viable strategy to protect the trademark of their goods or services for the entire life-cycle of their products.
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