Trademark Application Types: Understanding Your Options

Securing a trademark is essential for protecting your brand identity, but the type of trademark application you file can significantly impact the process. Trademark application types vary based on specific needs, and choosing the right one ensures a smoother trademark registration process. The USPTO offers several types of trademark applications, each suited to different requirements.

1. Base application (Sections 1 and 44)

The Base Application under Trademark Act Sections 1 and 44 has replaced the previous TEAS Plus and TEAS Standard applications. The USPTO now applies a flat fee of $350 per class of goods or services for electronic applications. While applicants can still use pre-approved descriptions from the USPTO’s Acceptable Identification of Goods and Services Manual, custom descriptions may require additional review, leading to potential office actions.

All filings and responses must be submitted electronically, and failure to meet the completeness requirements may result in processing delays or additional fees. The complexity of the application may lead to additional surcharges, though most applicants will only pay the base fee.

Who should apply:

Businesses that want a streamlined application process under a single fee structure, whether using standard or custom descriptions, and are prepared for potential classification reviews.

Businesses that can clearly define their goods or services using standard descriptions and want a cost-effective, efficient filing option with quicker processing times.

Businesses needing a more tailored description of goods and services that are not covered in the USPTO’s pre-approved list, and those willing to pay a higher fee for flexibility.

2. Intent-to-use (ITU) vs. Use-in-commerce (UTC) applications

Use-in-commerce (Section 1(a))

If you are already using your trademark in commerce, you should file a Use-in-commerce application. This requires submitting proof of use, such as product packaging, marketing materials, or sales records. The USPTO defines “use in commerce” as the bona fide use of a trademark in the ordinary course of trade—meaning the mark is genuinely being used to identify and distinguish goods or services in the market.

An application filed under this basis must include a specimen (a real-world example showing how the trademark is being used in commerce), which could be product labels, website screenshots, or promotional materials. The USPTO examiner may request additional evidence if the provided specimen is deemed insufficient.

Intent-to-use (Section 1(b))

If you have not yet used your trademark in commerce but plan to do so, you can file an Intent-to-use (ITU) application. This allows you to secure priority over others while you prepare to launch your product or service. However, you will need to submit a Statement of use (SOU) and pay additional fees before registration is finalized. The ITU application requires the applicant to submit a Declaration of Bona Fide Intent, confirming that they have a real intent to use the mark commercially.

Failure to provide the required Proof of use within the USPTO’s designated timeframe (typically within six months of receiving a Notice of allowance) can lead to application abandonment. Applicants may request additional time to submit Proof of use by filing for an extension, provided they have valid reasons for the delay.

Who should apply:

Use-in-commerce is suitable for businesses already using their trademark, while Intent-to-use benefits startups and companies planning to launch a product soon but want to secure rights before entering the market.

3. Foreign-based trademark applications

Businesses operating internationally may benefit from filing under one of these options:

Section 44(d) - Foreign priority basis

If you have applied for a trademark in another country within the last six months, you can claim priority in the U.S. by filing a corresponding application. This allows you to secure your filing date in the U.S. based on the original foreign application. However, this does not bypass the need to eventually show use in commerce.

Section 44(e) - Foreign registration basis

If you already own a registered trademark in another country, you can apply for a U.S. trademark without proving use in commerce. However, your foreign registration must be officially approved in its country of origin before your US. application is approved. This option is particularly useful for international businesses looking to protect their brand in the US.

Who should apply:

International businesses looking to protect their brand in the US. while leveraging their foreign trademarks.

4. Madrid Protocol – International trademark registration

For businesses seeking global trademark protection, the Madrid Protocol allows applicants to file a single international application that covers multiple countries. The USPTO acts as an intermediary, forwarding the application to the World Intellectual Property Organization (WIPO). This system provides a cost-effective and centralized way to obtain protection in various jurisdictions without filing separate applications in each country.

To apply through the Madrid Protocol, applicants must possess either a fully registered trademark or an active pending application with the USPTO before they can apply through the Madrid Protocol. Once submitted, individual foreign trademark offices review and approve applications according to their national laws.

Who should apply:

Companies planning to expand globally and seeking a simplified international registration process with cost and administrative efficiency.

Making the right application choice

Choosing the right trademark application depends on your business goals, budget, and expansion plans. Given the complexities of the process, many businesses seek professional assistance to navigate USPTO requirements, classify goods/services accurately, and manage office actions effectively.

USPTO’s advice on hiring an attorney

Is hiring a U.S.-licensed attorney required for filing a trademark application?

That depends on where you are domiciled:

• Yes, if you are a foreign-domiciled trademark applicant, registrant, or involved in Trademark Trial and Appeal Board proceedings. You must be represented by an attorney licensed to practice law in the United States.
• No, if you are domiciled in the United States or its territories. However, the USPTO strongly recommends hiring a U.S.-licensed attorney specializing in trademark law to ensure compliance and avoid costly mistakes.

For individuals and businesses outside the U.S., legal representation is mandatory. While U.S. residents can file independently, the USPTO advises professional legal guidance to enhance the likelihood of a successful registration.

Why choose Trademarkia?

Trademarkia, headquartered in the U.S. with offices across 13 countries on six continents, offers expert trademark assistance. With a team of over 300 professionals, including more than 20 U.S.-licensed intellectual property attorneys, Trademarkia provides:

• Comprehensive trademark search services to minimize the risk of conflicts,
• End-to-end application support, from filing to registration,
• Expert handling of office actions and legal challenges,
• International trademark registration assistance under the Madrid Protocol.

Whether you are a startup securing your first trademark or an established business expanding globally, Trademarkia simplifies the process, ensuring your brand receives the protection it deserves.

Secure your brand’s future today

Understanding your trademark application options ensures a smoother registration process and stronger brand protection. Whether filing domestically or internationally, leveraging expert legal assistance can help safeguard your brand’s long-term success. Choose the right trademark application and protect your business with confidence!