Filing Basis For a USPTO Trademark Application (TMEP 806):

A filing basis is the statutory basis for filing an application for registration of a mark in the United States [and answers the question: Under what law is your trademark qualified for protection?] An applicant must specify and meet the requirements of one or more bases. 37 C.F.R. §.32(a)(5).


TEAS Plus Filing Requirements (TMEP 809.01)

To be eligible for the reduced fee [currently $50 less], a TEAS Plus application must include one or more bases for filing, and all requirements of 37 C.F.R. §2.34 for each basis.


TEAS Plus Form (from http://www.uspto.gov/teas/teasplus.htm)

This form has a lower filing fee of $275 per class of goods and/or services, but has stricter requirements, than the TEAS form. [TEAS has a filing fee of $325.] Select this option ONLY if you agree to:

    * file a "complete" application. Almost all fields in this form are mandatory;

    * select the listing of goods and/or services for this application directly from the USPTO's Acceptable Identification of Goods and Services Manual. While certain listings permit "customization," total "free-text" entries for identifications cannot be made; NOTE: You should confirm that your identification(s) appear in the Manual by using the link, above, BEFORE entering the TEAS Plus form.

    * pay the fees for all classes at the time of filing;

    * file certain later communications regarding the application, such as a Response to an Office action, through TEAS; and

    * receive all communications concerning the application by e-mail during the pendency of the application.


NOTE: If you use TEAS Plus, you must pay an additional fee of $50 per class if at any time during the examination of the application the USPTO determines that (1) the application did not meet the TEAS Plus requirements as of the filing date; (2) you file a paper form after the initial application when a TEAS form exists for that purpose (e.g., a Response to an Office action); and/or (3) you refuse to receive correspondence from the USPTO by e-mail during the pendency of the application.


Five filing bases:

Statutes

Examples of Case Law regarding the different filing bases

1(a)

(1) use of a mark in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a);


[Note: You must already be using the mark in commerce on or in connection with all  the goods and/or services that you are planning to use under this basis.


Acceptable use for goods--the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.


Acceptable use for services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce.]


The Trademark Act defines " commerce" as commerce which may lawfully be regulated by Congress, and " use in commerce" as the bona fide use of a mark in the ordinary course of trade. 15 U.S.C. §1127.

The Federal Circuit has held that "use in commerce," in the context of a trademark, means "a bona fide sale or transportation in commerce which may lawfully be regulated by Congress.... This requirement breaks down into two distinct elements: (1) Was the transaction upon which the registration application was founded bona fide; and (2) if it was bona fide, was it followed by activities proving a continuous effort or intent to use the mark." Avakoff v. S. Pac. Co., 765 F.2d 1097, 10998 (Fed.Cir.1985).


Transportation of goods bearing trademark within or from United States is sufficient to establish "use" of mark "in commerce," provided such use is sufficiently public to identify marked goods in appropriate segment of public mind; thus, "transportation"sufficient to establish use in commerce, as alternative to "sale,"requires same elements of open and public use before customers. General Healthcare Ltd. v. Qashat, 70 USPQ2d 1566 (1st Cir. 2004).


[A] mark is not "used" when it is presented to a potential customer as part of a business plan; it must be employed in commerce such that it distinguishes the goods or services of a seller from others in the marketplace. McCarthy on Trademarks & Unfair Competition § 16:1 (4th ed. 1996); see also Allard Enters. v. Advanced Programming Res., 249 F.3d 564, 571-72 (6th Cir. 2001) (distinguishing federal registration of a mark from common law ownership of a trademark). Welsh v. Big Ten Conference Inc., 89 USPQ2d 2035 (N.D. Ill. 2008).

1(b)

(2) bona fide intention to use a mark in commerce under §1(b) of the Act, 15 U.S.C. §1051(b);


[Note: This is for if you have not yet used the mark, but plan to do so in the near future. An applicant has 6 months to use the mark in commerce and file a Statement of Use (SOU) after the mark has received a Notice of Acceptance. If more than 6 months goes by, the mark goes abandoned or an extension can be filed for if the requirements for an extension are met. ]

15 U.S.C. 1051(b)(1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark on the principal register. . .

The TTAB has held § 1(b) to require both actual intent to use a mark in commerce and evidence, contemporary with the application, that objectively demonstrate such an intent. Wet Seal, Inc. v. FD Mgmt., Inc., 82 U.S.P.Q.2d 1629, 1633 (T.T.A.B.2007) (actual intent); Commodore Elecs. Ltd. v. Cbm Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1507 (T.T.A.B.1993) (objective standard). [ ] The phrases "bona fide" and "good faith" ordinarily refer to a person's actual, subjective state of mind. BLACK'S LAW DICTIONARY 177 (6th ed.1990); see Howard v. SEC, 376 F.3d 1136, 1145 (D.C.Cir.2004). Certainly a person will fail to have a "bona fide" intent to use a trademark if his actual intent is otherwise. In addition, "bona fide" means not fraudulent or feigned, BLACK'S LAW DICTIONARY, supra, at 177, and in some circumstances, showing a "bona fide" intent will actually require proving certain objective facts, e.g. W. Air Lines, Inc. v. Criswell, 472 U.S. 400, 412-14, 105 S.Ct. 2743, 86 L.Ed.2d 321 (1985) (under ADEA, a "bona fide occupational qualification" must be reasonably necessary). Here, Congress made clear that a "bona fide intent to use" also involves an objective standard by specifying there must be "circumstances showing . . . good faith."  Aktieselskabet AF 21. November 2001 v. Fame Jeans, Inc., 525 F.3d 8 (D.C.Cir. 2008).

44(d)

(3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act, 15 U.S.C. §1126(d);

15 U.S.C. §1126(d):

An application for registration of a mark under sections 1051, 1053, 1054, or 1091 of this title or under subsection (e) of this section filed by a person described in subsection (b) of this section who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country: Provided, That—

(1) the application in the United States is filed within 6 months from the date on which the application was first filed in the foreign country;

(2) the application conforms as nearly as practicable to the requirements of this chapter, including a statement that the applicant has a bona fide intention to use the mark in commerce;

(3) the rights acquired by third parties before the date of the filing of the first application in the foreign country shall in no way be affected by a registration obtained on an application filed under this subsection;

(4) nothing in this subsection shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country unless the registration is based on use in commerce.

In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign application: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.

Section 44(d)(2) merely excuses certain foreign applicants from alleging use in commerce to secure registration under the statute. In re Rath, 402 F.3d 1207 (Fed.Cir.2005).

44(e)

(4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act, 15 U.S.C. §1126(e); and

15 U.S.C. §1126(e):

A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register herein provided. Such applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant. The application must state the applicant’s bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.



66(a)

(5) extension of protection of an international registration to the United States, under §66(a) of the Act, 15 U.S.C. §1141f(a). 37 C.F.R. §2.34.

15 U.S.C. § 1141(f):

 Effect of filing a request for extension of protection of an international registration to the United States

(a) Requirement for Request for Extension of Protection.—A request for extension of protection of an international registration to the United States that the International Bureau transmits to the United States Patent and Trademark Office shall be deemed to be properly filed in the United States if such request, when received by the International Bureau, has attached to it a declaration of bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration.



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How To Show Acquired Distinctiveness Under 2(f)

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Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

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Descriptive Trademarks Trademark2e.com  

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ID of Goods and Services see also Headings (list) of International Trademark Classes

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Not Just Patents Often Represents the Underdog

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Section 2(d) Refusals   FilingforTrademark.com

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What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

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DIY Overcoming Descriptive Refusals

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