Basis

How to Satisfy the Requirements for Clarifying, Substituting, or Adding a Filing Basis, or Applying for More than One Filing Basis

 

What Is a “Filing Basis”? 
 

A “filing basis” is the basis in the Trademark Act upon which you have filed your trademark or service mark application with the United States Patent and Trademark Office (USPTO).  You must include one or more filing bases in an application.  Each “filing basis” has different requirements that must be met before a trademark or service mark may proceed toward registration. 

In your application, you may select from four possible bases:

  1. Use in commerce basis (under Trademark Act Section 1(a)) – you are currently using your mark in commerce with your goods and/or services.
  2. Intent-to-use basis (under Section 1(b)) - you have a bona fide intention to use your mark in commerce with your goods and/or services in the near future.
  3. Foreign registration basis (under Section 44(e)) - you own a foreign registration of the same mark for the same goods and/or services from your country of origin.
  4. Foreign application basis (under Section 44(d)) - you own an earlier-filed foreign application that was filed within six months of your U.S. application for the same mark and the same goods and/or services.  This basis is also called a “foreign priority basis” because you are requesting a “priority” filing date for your U.S. application that is the same date as that of the foreign application filing date.

The specific legal requirements for these four bases are specified below.  

In addition to an acceptable filing basis, you must also establish a registration basis, a legal basis upon which you can register your mark.  There are two registration bases –use in commerce under Section 1(a) and a foreign registration under Section 44(e).  If you file an application under Section 1(b) based on your intent to use the mark in the near future or under Section 44(d) based on a foreign application, you must provide one or both of these registration bases before your mark will be permitted to register.

Further, this webpage does not discuss a Section 66(a) filing basis, which is based on a request for extension of protection of an international registration to the United States sent from the International Bureau of the World Intellectual Property Organization.  You cannot amend your application to one based on Section 66(a), nor can you combine a Section 66(a) filing basis with any of the bases referenced above.

For more information about the requirements for a filing basis, see 37 C.F.R. §§2.32(a)(5), 2.34(a) and TMEP §§806-806.01(d).  For additional information about a Section 66(a) filing basis, see TMEP §§806.01(e), 1904.01, 1904.01(a).  Further, to check the status of your application and whether something should be filed, see the USPTO’s Check Status & View Documents webpage.

For more information about the need for a registration basis for an intent-to-use or foreign application filing basis, see 37 C.F.R. §2.34(a)(1), (a)(3) and TMEP §§1003.03, 1103.  
 

What if My Application Does Not Clearly Specify a Filing Basis?
 

You must specify at least one filing basis in your trademark or service mark application.  If your application does not clearly include a filing basis, the USPTO will require that you amend your application to add one of the four bases mentioned above.  
 

What Are the Requirements for Each Filing Basis?
 

You may specify one or more filing bases by meeting the requirements below.

Use in Commerce Basis (Please click on the links within the list below to find useful information about each of the required elements for this basis.)

You may amend an application to one based on use of the mark in commerce under Section 1(a) only if you have used the mark in commerce in connection with all the goods and/or services listed under this basis as of the application filing date.  To assert this basis, you must provide  

  1. The following statement:  “The mark is in use in commerce and was in use in commerce as of the application filing date;”

  2. The date of first use of your mark anywhere on the goods or in connection with the services;

  3. The date of first use of your mark in commerce on the goods or in connection with the services; 

  4. One “specimen” for each class showing how you use the mark in commerce with the goods and/or services, and the following statement:  “The specimen was in use in commerce at least as early as the application filing date;” and

  5. Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.                                              

A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce. 

A mark is in use in commerce with services when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.

For more information about this basis, see 15 U.S.C. §1051(a), 37 C.F.R. §2.34(a)(1), and TMEP §§804, 806.01(a), 901-901.04
 

Intent-to-use Basis
 

You may amend an application to one based on a bona fide intention to use your mark in commerce under Section 1(b) if you can provide in good faith the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:

Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date. 

Although you may file an application based on a bona fide intent, this filing basis is not a basis for registration, so your mark will not be registered until you convert the application to one based on use in commerce by filing a timely and acceptable allegation of use (amendment to allege use or statement of use).  For more information about the requirements for an allegation of use and for filing one, please go to the Intent-to-Use Applications webpage

For more information about this basis, see 15 U.S.C. §1051(b), 37 C.F.R. §2.34(a)(2), and TMEP §§806.01(b), 1101.
 

Foreign Registration Basis
 

You may amend an application to one based on a foreign registration under Section 44(e) if you provide:  

  1. A copy of your foreign registration of the same mark from your "country of origin” (the country in which you are domiciled, incorporated or organized, if a business; or in which you are a national, if an individual; or you have a bona fide and effective industrial or commercial establishment).  The copy must be a true copy, photocopy, a certification, or a certified copy of a document issued to you by or certified by the intellectual property office in your country of origin.  And the foreign registration must be in force at the time the USPTO issues a registration based on your foreign registration.  If the foreign registration has expired or will expire before the U.S. registration will issue, you must submit evidence (proof of renewal, such as a copy of a certificate of renewal or other certification from the intellectual property office of the foreign country or a copy of the foreign registration showing it has been renewed) that the foreign registration has been renewed and will be in force at the time registration issues in the United States.
     
  2. An English translation of the foreign registration or proof of its renewal if the foreign registration or proof of renewal is not written in English.  The translator should sign the translation.  

  3. A listing of goods and/or services that does not exceed the scope of the goods and/or services in the foreign registration.

  4. The following statement, verified in an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  

Further, your "country of origin” (see definition above in (1)) must be a party to a convention or treaty relating to trademarks to which the United States is also a party or extends reciprocal registration rights to nationals of the United States by law.

For more information about this basis, see 15 U.S.C. §1126(e), 37 C.F.R. §2.34(a)(3), and TMEP §§806.01(d), 1002.04, 1004-1004.02.
 

Foreign Application Basis
 

You may amend an application to request a priority filing date under Section 44(d) based on an earlier-filed foreign application that you own for the same mark and the same goods or services.  This basis is also called a “foreign priority basis” because it allows you the benefit of receiving an earlier effective filing date for your U.S. application that is the same date as that of the foreign application filing date.

To assert this basis, you must provide:

  1. A timely "claim of priority,” that is, a claim of priority that has been asserted in the U.S. application within six months of the filing date of the foreign application.
     
  2. (a) The filing date, serial number, and foreign country of the first regularly filed foreign application, or (b) a statement that the U.S. application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.

  3. A listing of goods and/or services that does not exceed the scope of the goods and/or services in the foreign application.

  4. The following statement, verified in an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”

Further, your "country of origin” (the country in which you are domiciled, incorporated or organized, if a business; or in which you are a national, if an individual; or you have a bona fide and effective industrial or commercial establishment) and the country where the foreign application is filed must be a party to an international treaty or agreement with the United States that provides a right of priority, or extends reciprocal rights to priority to U.S. nationals.

Although you may file an application on this basis and receive a priority filing date, this basis does not provide a registration basis.  You will still need to establish a registration basis such as a use in commerce and/or a foreign registration basis. 

For more information about this basis, see 15 U.S.C. §1126(d), 37 C.F.R. §2.34(a)(4), and TMEP §§806.01(c), 1003
 

Why Do Certain Filing Basis Requirements Have to Be Verified?  What Does “Verified” or “Verification” Mean?
 

All four filing bases require certain statements, and additionally, for a use in commerce basis, dates of use and specimens, to be “verified.”  Filing an application with the USPTO starts a legal proceeding regarding your trademark or service mark, and thus, statements made in your application must be truthful and made with knowledge of the penalty of perjury under the laws of the United States.  So, verifying a statement means that you are making a statement that is sworn to, made under oath or in a notarized affidavit, or with a written and signed declaration stating that you have been warned that willful false statements and the like are punishable by fine or imprisonment, or both and that such willful false statements could jeopardize the validity of your application or any resulting registration, and that statements made of your own knowledge are true, and all statements made on information and belief are believed to be true. 

For more information about verification, see 37 C.F.R. §§2.2(n), 2.33 and TMEP §§804–804.04.
 

Can I Include More than One Filing Basis in my Application?
 

Yes, if you can meet the requirements for each basis that you claim.  However, you may not assert in the same application both (1) a use in commerce basis and (2) an intent-to-use basis for identical goods and/or services. 

In addition, you may claim different filing bases for different international classes of goods and services, and for specific goods or services within one international class.  To assert different filing bases in the same application, you must clearly state that you are claiming more than one filing basis, and must separately list each basis, followed by the goods, services, or classes to which that basis applies.  You must also state if some or all of your goods or services are covered by more than one basis.

For more information about filing for multiple bases in an application, see 37 C.F.R. §2.34(b) and TMEP §806.02(a)-(b)
 

How Do I Satisfy the Requirements for Clarifying, Substituting, or Adding a Filing Basis in my Response to an Office Action?


Responding Online Using the Trademark Electronic Application System (TEAS):  Below are instructions for how to use TEAS to respond to such issue in an Office action. The instructions below presume that you will be using a TEAS form to respond online to more than one issue. To respond using TEAS, you must fill out the form to address all issues in the Office action and, at the end of the form, the correct party must properly sign it. For more information about who may sign a response, please review your Office action.

To respond to this issue in a nonfinal Office action, use the TEAS "Response to Office Action" (ROA) online form. To respond to this issue in a final Office action, use the TEAS "Request for Reconsideration after Final Action" form. These forms will include the appropriate required statements and supporting declaration language referenced in the Office action. The instructions provided in both forms are the same. For technical assistance with these forms, contact TEAS@uspto.gov.
 

TEAS Online Form Instructions:
 

To submit a use in commerce basis under Section 1(a):  Answer "Yes" to form wizard question #2; and then, continuing on to the next portion of the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which the basis is being amended: (1) check the box next to the following statement:  "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.;” (2) check the box next to "Filing Basis Section 1(a);" (3) enter dates of first use in the two boxes below that statement using the format MM/DD/YYYY; (4) under “Specimen File” attach a specimen (attachment may not exceed 5 megabytes); (5) describe in the box below where you attached the file what the specimen consists of; and (6) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form):  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application . . . .”).

WARNING: When submitting a verified specimen (or any verified statement), the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. The declaration in the TEAS online form should not be bypassed, doing so will likely result in the refusal of your specimen.

To submit an intent-to-use basis under Section 1(b):  Answer "Yes" to form wizard question #2; and then, continuing on to the next portion of the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which the basis is being amended: (1) check the box next to the following statement:  "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.” and (2) check the box next to “Filing Basis Section 1(b).” 

To submit a foreign registration basis under Section 44(e):  Answer "Yes" to form wizard question #2; and then, continuing on to the next portion of the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which the basis is being amended: (1) check the box next to the following statement:  "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.;” (2) check the box next to “Filing Basis Section 44(e);” and (3) provide the required data regarding the foreign registration in the ensuing boxes and attach a true copy of the foreign registration (or proof of its renewal, if appropriate).

To submit a foreign application basis under Section 44(d):  Answer "Yes" to form wizard question #2; and then, continuing on to the next portion of the form, under the heading "Classification and Listing of Goods/Services/Collective Membership Organization," do the following for each relevant class for which the basis is being amended: (1) check the box next to the following statement:  "Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration.  If not checked, the changes will be ignored.;” (2) check the box next to “Filing Basis Section 44(d);” and (3) provide the required data regarding the foreign application in the ensuing boxes.