When filing a federal trademark application there are a few different options for filing basis. The two main options are section 1a (in use) or section 1b (intent to use). Choosing between these options ultimately comes down to the status of your mark as used in commerce.
According to the United States Patent and Trademark Office, “commerce” refers to all commerce that the U.S. Congress may lawfully regulate; interstate commerce or commerce between the U.S. and another country.
Trademark filing basis Section 1a “in use” means that you are already using your mark in commerce; you are already selling goods or advertising services in association with that name and can prove it with a specimen(s) – which shows how the mark is used in interstate commerce.
Trademark filing basis Section 1b “intent to use” this means that you are not actively using your mark in commerce, but plan to, and are actively working to, in the near future.
Depending on what basis applies to your situation at the time of filing the trademark application, the process and filing requirements will look a little different.
Section 1a (In Use) Filing basis process and requirements:
- Application Filed (specimens and use dates required)
- Examiner Review
- Publication
- Registration
Section 1b (Intent to Use) Filing basis process and requirements:
- Application Filed
- Examiner Review
- Publication
- Notice of Allowance*
- Statement of Use (specimens and use dates required)
- Registration
*The Notice of Allowance gives you six months to either submit the specimen (a.k.a. Statement of Use) or request an extension to submit a specimen if you are still not using the trademark in commerce. You can request the six-month extension up to five times, giving you a total of 30 months from the date of the Notice of Allowance to submit a specimen. However, each extension requires fees.
Therefore, filing a trademark under section 1a (in use) saves a little extra time and money in the long run, but if you don’t yet have specimens or sell your products and services, filing intent to use may still be worth it to get a filing date and start protecting the mark through a pending application.