By: Kennington Groff
So, what really is the difference between a Section 1(a) actual use application and a Section 1(b) intent to use trademark registration application? Is one application better than the other? Why would I file a trademark registration application if I am not actually using my mark? How do I protect this new name I thought of for by business/product? To learn more about the option that is right for you and the pros and cons of each application check out our comments below.
In order to file a Section 1(a) trademark registration application, referred to also as an Actual Use Application, a company/individual must be actively using its trademark in commerce in relation to the goods and/or services it offers or sells. The Trademark Manual of Examining Procedure § 901.01 defines what this “use in commerce” means:
The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce–
- (1) on goods when—
- (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
- (B) the goods are sold or transported in commerce, and
- (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
So, when an Applicant can show that it is actively using its mark in commerce in connection with the services/goods it offers, then a Section 1(a) Actual Use application for registration should be filed.
A Section 1(b) Intent to Use application is a way to protect a trademark before you start using it.
One of the greatest benefits of an intent to use application is the opportunity for a company/individual to “reserve” a mark and prevent others from registering a mark in the event they file an application after you. This “reservation” can save people from a rebrand and can make it costly for later filed trademark registration applicants to try and register their mark/ prevent you from using your mark. It can also serve as a deterrent for anyone searching the Trademark Office for marks already in use.
Once an intent to use trademark registration has gone through the process with the Trademark Office and a Notice of Allowance has been issued, this triggers the next steps in the process to show the Trademark Office you are using your mark. Applicants have two options at this time to either (1) convert their application to an in-use application by filing a statement of use showing the Trademark Office their mark is now in use in commerce in connection with their goods/ services or (2) filing an extension to buy more time to show the Trademark Office their mark is not yet in use. A total of 5 extensions are allowed and must be renewed every six months after the Trademark Office issues a Notice of Allowance.
All in all, determining which trademark registration application to file is critical to determining the validity of your mark. Further, waiting too long to file a trademark registration application can result in someone already having obtained a registration on your mark or a mark similar to yours that can costs you a significant amount of time and money down the road to try and obtain a registration for your mark.
If you are not sure when to file a trademark registration application or which application to file, contact Lilenfeld PC at (404) 201-2520 with any questions you may have regarding applying to register your trademark.