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Trademark Applications: Currently Used in Commerce: 1(a) vs. Intent to Use: 1(b)

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Under the United States Trademark laws, there are two different types of trademark applications available for trademark registration. The first is referred to as a 1(a) or currently in use in commerce application. The other is a 1(b) or intent to use application. There are advantages and disadvantages to each application, which all small business owners should know before they decide to file for trademark protection.

The 1(a) or currently in use application refers to products or services that a business is currently producing or have available under the business or trademark name. “In use” refers to the fact that the products or services are available to the public and to a market more than just the state the company is located within. You must also be able to prove that your mark is “in use” at the time your application filed by submitting a “specimen”. “Commerce” refers to the fact that your product or service must be available to consumers within your own state and to other consumers outside of your state.

There a several requirements for a “specimen” if you plan on filing as an “in use” application. The “specimen” must show the mark in “in use”. This means that your product or service must be sold under the name you plan on registering as a trademark. Examples include: Hang tags on a t-shirt displaying the name, product packaging displaying the name you intend to register or a website with the name in the banner showing the services you have listed in your application along with a way for the consuming public to contact you for in order to get your services. Screen shots from a website for your service are normally the best specimen for your “in use” application for a service mark. Pictures of product packaging or hang tags on a shirt displaying the name are usually most suitable for a trademark/product name filing as an “in use” application.

The “commerce” requirement for “in use” applications refer to companies that sale or provide services in more than one state. If your product or service is limited to just one state, then you would likely be better served by filing a state trademark (more on this topic in a later post). However, having your product or service available on the internet will more than likely qualify you as use in commerce for trademark purposes. The “specimen” and “commerce” requirements must be met before you can file an “in use” application.

The requirements for a 1(b) or “intent to use” application at the time of filing are less stringent. The “intent to use” application only requires that you have a name you would like register for protection and an identification of the service or product you will be providing under the name. There is no “specimen” or “commerce” requirement in order to file as “intent to use”. This means that you are not currently producing the product or making the service available but that you have good faith intent to use the trademark name for the products or services in the future.

However, the “specimen” and “commerce” requirement must be met before you can receive a final registration for your trademark application. All trademark applications must meet these two requirements before a final registration will be granted. The downside to the “intent to use” application is that the “specimen” and “use in commerce” issues must be met later down the road of the application and cost an additional fee in order to meet the requirements. There is a certain timing that must be used in order to determine the cost of the additional filings for the “intent to use” application. If you are ready to submit a “specimen” in order to prove you are using the mark in commerce within 3 to 4 months of submitting your application, you will need to file an Amendment to Allege Use with the USPTO for a cost of $100. If you need longer than 3 or 4 months to prove use with the specimen, you have to wait for the USPTO to send you a Notice of Allowance, which tells the applicant that they have 6 months to submit a “specimen” to prove use in commerce with the USPTO. The filing required after receiving a Notice of Allowance is a Statement of Use, which costs the applicant $150.

If you have filed an “intent to use” application or are thinking about filing for trademark protection, give one of our trademark attorneys at Fears | Nachawati, PLLC a call. We would love to discuss the issues involved in filing a Trademark application with you or discuss any type of intellectual property issue you may have.

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