When applying to register a trademark, a critical component you will encounter is selecting a “basis” for the application. Selecting the correct basis is crucial for ensuring that your application is processed smoothly and aligns with your business activities. Let’s break down what “basis” means in the context of trademark filings and why it’s important for startup founders to understand this part of the trademark registration process. Note that this article focuses only on U.S.-based companies and does not get into unique basis issues that arise for foreign enterprises.
What Does “Basis” Mean in Trademark Filings?
In the United States, the “basis” of a trademark application refers to the legal foundation upon which you are filing your application. Essentially, it tells the U.S. Patent and Trademark Office (USPTO) under what circumstances you are using (or plan to use) your trademark in commerce. There are two (2) primary bases to choose from:
1. [Current] Use in Commerce (1(a))
This basis is used if you are already using your trademark in the selling, transporting, or advertising of your goods or services. To file under a use in commerce basis, you must provide the USPTO with:
- A “specimen of use,” which refers to actual examples of how you use that exact trademark on or in connection with the sale or advertising of your goods or services, be it on packaging, labels, a website, advertisements, or otherwise.
- The “date(s) of first use,” which refer to the earliest documented date(s) when you used your trademark in a commercial manner anywhere and in the U.S. (if different).
2. Intent to Use (1(b))
This basis is selected if you have not yet used the trademark in a commercial setting but plan to do so in the future. It is slightly more expensive to file applications on an intent-to-use basis, but it reserves the mark while you prepare for its commercial debut, a crucial strategy for startups that are in the product development or pre-launch phase.
When filing under an intent-to-use basis, you are not required to provide a specimen of use or date(s) of first use when you submit the application. However, you will need to submit a “Statement of Use” with a specimen and dates of first use before the USPTO will finalize the registration.
Why is Choosing the Correct Basis Important?
Selecting the correct filing basis is vital because it affects the requirements of your application, the timeline of the registration process, and your rights as a trademark holder. A misstep in selecting your basis can lead to delays, additional costs, or even the rejection of your application.
Strategic Considerations
- Align Basis with Business Strategy: Your choice of basis should align with your business timeline and market entry strategy. If your product is market-ready, consider the use-in-commerce basis; if you’re still in development, the intent-to-use might be more appropriate.
- Evidence and Documentation: For a use-in-commerce basis, ensure you have all the necessary evidence of use available before filing. For an intent-to-use basis, plan for the additional step of filing a Statement of Use after the application is allowed.
- Cost Considerations: Intent-to-use trademark filings come with additional costs. The USPTO charges a separate fee per class to file a Statement of Use or to request an extension of the Statement of Use deadline. While the fee is relatively low, it can add up if there are multiple classes, and for many startups, budgets are tight.
Takeaway
Understanding and selecting the correct basis for your trademark application is not merely a procedural step—it is a strategic decision that protects your brand and aligns with your business operations. As with many aspects of intellectual property, when in doubt, it’s wise to consult with a trademark attorney to navigate this complex terrain effectively.
[View source.]
