USA: Application Types
A US application can have multiple classes of goods and services, each with its own filing basis. Even within the same class number (i.e. Class 25 for clothing items), you could have different filing basis (i.e. you can file sweaters as Actual Use and shirts as Intent to Use). The following describes how each filing basis works alone and with each another:
1a (Actual Use) – You must provide proof of use of the mark in the US at the time of filing. No further filings should be necessary (other than addressing office actions or oppositions). A proof of use can be an image of the trademark on the product, or an active website selling to U.S. customers.
1b (Intent to Use) – If the trademark is not being used in commerce in the USA, proof of use will have to be presented at an additional fee to finalize the registration process. You must provide proof of use (Statement of Use or SOU) of the mark in the US within 6 months after the date the mark reaches Notice of Allowance (NOA) or becomes “accepted”. NOA is a status reserved for Intent to Use applications and means that the 1b classes on the mark are tentatively approved to be registered pending the filing of a proper and approved SOU. If you cannot provide proof of use within that 6-month period, you may request a 6-month extension (Extension to File SOU) by paying additional fees. You can request up to 5 extensions. However, by no later than 3 years from the NOA date, you must file an SOU. Failure to do so will result in your mark being abandoned.
44d (Foreign Application) – Within 6 months of filing a foreign application, in a country where you are domiciled, have a bona fide and effective industrial/commercial establishment, or are national, you can use that filing as a basis for filing a US application. You can only claim priority in a US application for those classes filed in the foreign application. To add classes to a US application that aren’t covered in the foreign application, these additional classes must be filed under an “Actual Use” or “Intent to Use” basis. Once the US application has been examined, it is suspended pending receipt of the foreign registration certificate. If the foreign registration fails (or is going to take years to process), the 44d basis can be substituted with a 1a or 1b basis. This means that you are no longer using the foreign application as the basis for approving your trademark… you will have to show US based use. A big advantage to a 44d/44e approach is that you don’t have to show use in the US to get your initial registration (you do have to show use for the Section 8 and Section 8/9 renewals). Once a foreign registration certificate is filed, the mark is re-examined to make sure that the classes claimed on the foreign registration match the US application. If they don’t match, an office action will be issued.
44e (Foreign Registration) – At any time after a foreign trademark has registered, it can be used as the basis of a US filing (44e). Just like a 1a, proof is required at the time of filing, but instead of proving use, it requires a copy of the actual foreign registration certificate; printouts from foreign intellectual property office are not acceptable. Also, you must provide a signed translation of your foreign registration certificate if it isn’t in English; a certificate translation is not required, just that the translation is complete and signed. In addition, you must be able to prove that you are domiciled, have a bona fide and effective industrial/commercial establishment, or are national in the country where the trademark is registered. Just like a 44d, you can only claim priority in a US application for those classes filed in the foreign registration. To add classes to a US application that aren’t covered in the foreign registration, these additional classes must be filed under an “Actual Use” or “Intent to Use” basis. Otherwise, processing of a 44e continues much like a 1a basis. Again, a big advantage to 44e is that you don’t have to show use in the US to get your initial registration (you do have to show use for the Section 8 and Section 8/9 renewals). IMPORTANT NOTE – Having a foreign registration DOES NOT guarantee US registration… the mark is still examined and may be rejected due to prior US filings, differences in US trademark laws (i.e. filing of surnames is allowed in some foreign countries, but not in the US).
Should you have any additional questions about your own trademark registration process in the USA and application type, please feel free to email your personal Account Manager and we will respond within 1 business day.
To proceed to our US trademark registration page, please click here.