Why Use a 1b (Intent to Use) Filing Basis on a Trademark Application?

Constructive Use Benefits

 A 1(b) trademark applicant has the benefit of Constructive Use of the trademark as of the filing date of the application for priority purposes. Contingent on registration of the mark on the Principle Register, the filing of the 1(b) application to register constitutes “constructive use” of the mark, conferring “a right of priority, nationwide in effect” subject to the following exceptions.  

Except for a person whose mark has not been abandoned and who, prior to such filing—

(1) has used the mark;

(2) has filed an application to register the mark which is pending or has resulted in registration of the mark; or

(3) has filed a foreign application to register the mark on the basis of which he or she has acquired a right of priority, and timely files an application under section 44(d) to register the mark which is pending or has resulted in registration of the mark.

A 1(b) intent-to-use trademark application is the proper type of USPTO filing basis (not based on a foreign filing) for situations where there is No use of mark yet* but a bona fide intention to use the mark on the all of the goods or services listed in the application. The (b) comes from the applicable trademark statute: 15 U.S.C. § 1051(b) or  Lanham Act § 1(b). This type of application is also known as an “ITU” application for registration.

Like a 1(a) filer (already in use in commerce), the user of a 1(b) USPTO trademark application (highlighted in the declaration below)  makes a declaration (see below) regarding the planned use of the trademark and the user’s rights in that trademark and makes a sworn  declaration that “that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.”

* No use of mark yet may mean that the applicant is using the commerce in commerce but not claiming use in commerce yet for some reason. An applicant is not required to submit under 1(a) if the mark in already in use. There are some possible advantages (not an exhaustive list) to having a 1(b) application: by filing a Section 1(b) application, an applicant can ensure that no use-based refusals or requirements would issue during examination; an applicant could also find out if there is an opposer before fully investing in the mark.

Even an applicant filing without an attorney needs to take this declaration very seriously. “[The] fact that [an] applicant filed the application without the assistance of counsel did not give applicant a free pass to disregard the straightforward requests of a use based application [1(a)] and the solemnity of the application declaration.” § 3:180 Fraud on the PTO, Trademark Trial & App. Board Prac. & Proc.

Taking Advantage of Constructive Use

An applicant with a 1(b) application has the right to oppose a later filed application in an opposition and in this opposition, rely on the filing date of the 1(b) application as a priority date.

A 1(b) or ITU applicant can file up to five extensions of time of six months each. This time, plus the first six months after a Notice of Allowance, can give up to three years of time to submit an Allegation of Use/Statement of Use. Efforts made toward using the mark in commerce  must be continuing to submit a request for an extension of time past the first request.  Efforts to use the mark in commerce may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities, such as efforts to secure funding.

Examples of activities that would not be acceptable to show good cause include physical illness or disability and lack of staff and resources due to economic downturn.

What is an Allegation of Use?

An Allegation of Use is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. (Since most trademarks are now filed electronically, this is usually an electronic signature.) With the Allegation of Use, the owner must submit:

• a filing fee of $100 per class of goods/services; and
• one specimen showing evidence that the mark has been properly used in commerce for each class of goods/services.
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When do I file an Allegation of Use? During one of the two windows of opportunity.

You may file the Allegation of Use only on or before the day the examining attorney (window 1) approves the mark for publication in the Official Gazette or on or after the day the USPTO (window 2) issues the Notice of Allowance.  

This first window of opportunity (Window 1) is on or before the status of the application in the USPTO's TSDR database changes to “Approved for Publication.” An Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use (AAU).

This second window of opportunity (Window 2) is on or after the status of the application in the USPTO's TSDR database changes to “Notice of Allowance.” An Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use (SOU).

The Amendment to Allege Use (AAU) and the Statement of Use (SOU) include the same information and differ only as to the time when it is filed. If you file an Allegation of Use between the period after the mark is approved for publication but before the Notice of Allowance is issued (called the “blackout period”), the USPTO will return it (not accept it).

In the above explanation, Window 1 is approximately three months (from application to examination) if there are no office actions. This is the initial processing time between when the application is filed and when it is “Approved for Publication.” Window 2 is six months plus any additional time that is applied for in an Extension Request(s).

Is there a deadline for filing the Statement of Use after the Notice of Allowance issues?

Yes. Once the USPTO issues the Notice of Allowance, you have six (6) months to file the Statement of Use. The six-month period runs from the date the USPTO issues the Notice of Allowance, not the date you receive it. If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use (Extension Request) before the end of the six-month period, or the application will be declared "abandoned."

What is a Request for an Extension of Time to file a Statement of Use?

An Extension Request is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee of $125 per class of goods/services must accompany the Extension Request. The form for filing the Extension Request is available at http://www.uspto.gov/teas/index.html. A sample of the form (not for filing) is found here SAMPLE EXTENSION REQUEST (PDF) .

The Extension Request, if granted, gives the owner an additional six (6) months (computed in six month increments from the Notice of Allowance date) to either:

• Use the mark in commerce and file a Statement of Use; or
• File another Extension Request.

You may continue to file Extension Requests every six (6) months for a total of five extensions allowed. However, you must use the mark and file a Statement of Use within three (3) years of the date the Notice of Allowance issues. The USPTO will not register a mark if, after thirty-six (36) months of the mailing date of the Notice of Allowance, no Statement of Use has been filed. NOTE: The six-month periods are based solely on the issuance date of the Notice of Allowance (NOA), and NOT from the filing date of any extension; i.e., the six-month period following issuance of the Notice of Allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension.

WARNING USING A Statement of Use INSTEAD OF AN AMENDMENT TO ALLEGE USE CAN BE RISKY: Unlike with an Amendment to Allege Use filed before an application has been approved for publication [this comes before the mark is Published for Opposition], the applicant may not withdraw a Statement of Use (SOU) filed after a Notice of Allowance has been issued if the SOU fails to meet the statutory requirements. 37 C.F.R. §2.88(g); TMEP 1109.17. A specimen refusal after Notice of Allowance is a very common reason that trademark applications go abandoned.

However, the applicant may file one “insurance” extension request with the SOU, or afterwards, in the limited situation where time remains in the existing six-month period in which the SOU was filed. This would provide additional time to comply with the statutory requirements for filing the SOU. 37 C.F.R. §2.89(e)(1). See TMEP §§1108.03 and 1109.16(c). Since the SOU cannot be withdrawn, any substitute specimen, if needed, must have been in use in commerce during the time period allowed for the SOU.

Should you file a 1(a) or a 1(b) filing basis? Depends on the facts! Having a strategy based on facts rather than just filling out a form should get a better result.

EMAIL us at W@Tmk.law with questions or call 1-651-500-7590. Short initial consultations are usually free.