BASIS OF APPLICATION

There are two bases for registering a mark with the Trademark Office.

Actual Use

“Actual Use”, where the applicant has actually been using the mark in interstate commerce In this instance the applicant must disclose the date the mark was first used in commerce anywhere, and the date the mark was first used in interstate commerce In addition, the applicant must submit a specimen” showing the mark used directly on the goods, or on labels, packaging, trade dress or the like. With respect to goods, showing use of the mark on stationery, business cards and advertising is not sufficient, although it may be with respect to services. Submitting specimens is generally done by taking digital photos and uploading them to the Trademark Office website. A successful “actual use” application results in a formal registration of the mark with a registration certificate and number

Intent To Use

It is also possible to apply for a federal registration prior to actually using the mark in commerce. This is called the “intent to use” basis This is valuable because an applicant wants to be certain it will own the mark before investing heavily in manufacturing and advertising and promotional materials A successful “intent to use” application results in a “Notice of Allowance,” giving the applicant six months in which to file a sworn Statement of Use As in the actual use application, the Statement of Use contains the date the mark was first used in interstate commerce and requires submission of a specimen. If the Statement of Use is accepted, the formal registration certificate and number will issue. Extensions of time may be requested, giving the applicant up to three years in which to file the Statement of Use. If the Statement of Use is not timely filed, then the application is deemed abandoned and the applicant must start over again