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Trademark Filing Basis

How to Choose a Trademark Filing Basis

Lindokuhle Mkhize

Lindokuhle Mkhize

10 November 20233 min read

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trademark filing basis

If you're considering filing your trademark, it's essential to understand and choose the appropriate filing basis. This article will delve into the trademark filing process and highlight the significance of filing bases. 

Let’s get started:

Actual Use and Intent to Use

The two main filing bases under Section 1 are Actual Use and Intent to Use trademarks. 

The "Actual Use" basis refers to trademarks currently used in commerce for the specified goods or services. 

Conversely, the "Intent to Use" basis is for individuals with an intent to use their mark in commerce, even if they haven't begun using it yet.

What constitutes "Use in Commerce"?

"Use in Commerce" is vital when filing a trademark application. It means you’re actively selling goods or services under the trademarked name. To establish registration on this basis, you must provide evidence of use of the mark on the goods or services specified in your application.

For services, this may involve showcasing the mark on a website, while for goods, providing images of products with the mark may be required. 

Unveiling the power of "Intent to Use"

Filing under the "Intent to Use" basis requires a genuine intention to use your mark in the future. This secures priority over potential competitors who might register a similar mark, providing you with a competitive advantage. However, please keep in mind that there is a fee associated with submitting specimens to demonstrate actual use in interstate commerce.

Understanding foreign filing bases

Additionally, it's important to note that foreign filing bases are available for those who have registered or applied for trademarks in other countries. These can be used as a basis for filing in the United States, simplifying the application process for international businesses.

Selecting the right filing basis

Before proceeding with your trademark application, you must choose at least one filing basis. Failure to specify a priority filing date or basis will result in the return of your application until a basis is selected.

Understanding the dates of first use

The "date of first use" refers to the filing date of the first instance of the mark, regardless of location, being used in connection with the products or services specified in your application.

On the other hand, the "date of first use in commerce" refers to the first instance of use of the mark in connection with goods or services within the United States. This typically includes the date of the first sale of goods or the date of rendering the service.

Challenges and solutions 

The trademark filing process can involve various mistakes and challenges, including:

  • Improper use of the TM symbol
  • Insufficient distinctiveness of the trademark
  • Possible confusion with existing trademarks
  • Selection of the wrong class for the trademark

It's vital to understand the intricacies of trademark filing bases and respond appropriately to any issues that may arise. 

One common challenge is amending a filing basis. Suppose your application doesn’t specify a filing basis. In that case, the USPTO will require an application amendment to include one of the four available filing bases. 

Additionally, suppose your application encounters an office action. In that case, you may need to address issues related to your filing basis or other application requirements. 

Ensuring a smooth trademark registration journey

In the intricate world of trademark law, understanding and selecting the appropriate filing basis is a critical step in safeguarding your brand. Seeking the assistance of a skilled trademark attorney will ensure a smooth trademark registration process.


What is a trademark filing basis?

A trademark filing basis is the legal reason for submitting a trademark application, indicating whether the mark is already in use, intended for future use, or has foreign registration. The chosen basis affects the application process and the scope of trademark protection.

What is the difference between filing basis 1A and 1B?

Filing basis 1A is for trademarks already in use in commerce, where applicants provide proof of current or prior use. Filing basis 1B is for those with a genuine intent to use the trademark in the future but haven't used it in commerce yet, allowing them to reserve the mark for future use. The distinction lies in whether the mark is currently in use (1A) or intended for future use (1B).

What does current filing basis 1A mean?

A 1A basis means that there is a commercial use of the mark. A 1B basis means the mark isn't in commercial use.

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Lindokuhle Mkhize, a skilled creative copywriter and content lead at Trademarkia, brings a wealth of experience in driving innovation and managing teams. With previous success in starting and growing the Innovation and Marketing department at her former creative agency, Lindokuhle boasts expertise in leadership and delivering compelling content. Based in South Africa, Lindokuhle's work focuses on key themes of creativity, effective communication, and strategic marketing.