A filing basis is the basis on which your trademark or service marks application has been filed with the United States Patent and Trademark Office. An application must contain one or more filing bases. Each “filing base” has its own requirements and must be satisfied before a trademark, service mark or other trademark can be registered.

Basis for application filing

It is necessary to specify the legal basis for federally registering your trademark. This is called a filing basis. There are many filing bases. You must meet all legal requirements to choose the one you prefer. Most common are intent to use and use in commerce.

You can choose from four bases when you submit your application

  1. Use of your mark in commerce (under Trademark Act Section 1(a)) – You are using your mark in commerce currently with your goods or services.
  2. Intent to Use Basis (under section 1(b)), you have an actual intention to use your mark for commerce with your goods or services in the near future.
  3. Foreign registration basis (under section 44(e),) you have a foreign registration for the same mark that you use to identify the same goods or services in your country of origin.
  4. Foreign application Basis (under Section44 (d)) If you have an earlier-filed international application, it must be filed within six months of the U.S. application. This applies to foreign applications that were filed within six month of the U.S. application. It must contain the same mark and the exact same goods or services. This basis is also known as a “foreign priority base” since you want a priority filing date for your U.S. applications that is the same day as the foreign application filing.

An acceptable filing basis is not enough. You also need to establish a Registration Basis. This legal basis will allow you to register your trademark. There are two bases for registration: use in commerce or foreign registration. Before your mark can be registered, you need to file an application that is based on the use of the mark in the immediate future or on a foreign application.

Use in Commerce Basis

An application may be amended to include the mark in commerce. However, you must have used this mark for commerce with all goods or services that are listed under this basis at the date of filing. This basis must be established by providing;

  1. The following statement:  “The mark is in use in commerce and as of the application filing date it was in use in commerce;”
  2. The date of the first use of your mark anywhere in connection with the goods and services;
  3. The date you first used your mark in commerce on the goods or in connection with the services; 
  4. Each class should have a “specimen” showing how the mark is used in commerce with the goods or services. the following statement is made: “The specimen was in use in commerce at least as early as the application filing date;”
  5. Verification, in an affidavit or signed declaration of the statements above and dates of use.

The mark is considered to be in use in commerce with goods when (1) it is placed on the goods, packaging, or displays (including webpage displays) and (2) the goods actually are being transported or sold in commerce. The mark is used in commerce with services when (1) it is used in advertising or selling of the services and (2) the services are being rendered in commerce.

Intent to use

An application may be amended to reflect a bona fide intent to use your mark for commerce. If you can provide the following statement, verified along with an affidavit.

The applicant has a bona fide intention to use this mark in commerce. As of the application date, the applicant had a bona fide intention to use the mark in commerce.

While you can file an application on the basis of a bona fide intention, it is not a basis to register. This means that your trademark will not be registered until you convert the application to one based upon use in commerce. You must submit a timely and acceptable allegation or statement of use.

Foreign registration basis

If you provide the following, you can amend application to a foreign registration basis:

  1. A copy of your foreign registration, the same mark from your country of origin (the country where you are domiciled or incorporated, or if you are an individual, in which you reside, or you have a bona-fide and profitable industrial or commercial establishment). A true copy, photocopy or certified copy of the document you received from your country of origin or certified document issued by your country of origin’s intellectual property office must be included. The foreign registration must be valid at the time that the USPTO issues registrations based on your foreign registry. You must provide evidence that your foreign registration is valid and current at the time of registration in the United States.
  2. An English translation for the foreign registration. The translation should be signed by the translator.
  3. Listing of goods and services that does not exceed the scope for the goods or services listed in the foreign registration.
  4. The following statement is verified under an affidavit, signed declaration. The applicant has a bona fide intention to use this mark in commerce. As of the application date, the applicant has real intention to use the mark.

Your “country of origin” must also be a party to any convention or treaty related to trademarks or extend reciprocal registration rights for nationals of the United States.

Foreign application basis

An amendment to an application can be requested for a priority filing date. This is based on a foreign application you have filed earlier for the same mark, the same goods or the same services. This basis, also known as a “foreign prior basis”, allows you to receive an earlier effective filing date for U.S. applications that is the same date that the foreign application filing date.

This basis must be established by you providing:

  1. A timely “claim for priority,” which is a claim of prioritization that was asserted in the U.S. Application within six months from the date of the foreign filing.
  2. The file date, serial number and the foreign nation of the first foreign application.
  3. A statement that the U.S. request is based on a previous regularly filed application in the foreign country.
  4. Listing services and goods that is not beyond the scope of the foreign application.
  5. The following statement is verified under an affidavit, signed declaration. The applicant has a bona fide intention to use this mark in commerce and intends to use it as of the application filing date.

Your “country of origin” is the country in which your domicile, incorporation, or organization occurs, if you are a business or individual. The country where the foreign application was filed must also be a signatory to an international treaty with the United States, which provides priority rights or extends reciprocal rights that priority to U.S. citizens.

This basis allows you to file an application and get a priority filing date. However, it does not give you a registration basis. However, you will need to create a registration base such as a use-in-commerce basis and/or a foreign registration basis.

Each of the four filing bases requires certain statements to be “verified”. For example, for a use-in-commerce basis, dates and specimens must be provided. Statements made in an application to the USPTO must be true and made with knowledge about the penalties of perjury under US law. 

Verifying a statement is when you swear to it, either under oath, in a notarized statement affidavit or written and signed. This declaration states that you have been advised that false statements or the like could result in the cancellation of your application. Also, that all statements that are based on information or belief are true.

Understanding the Strategic Impact of Your Filing Basis

When you're setting up the foundation of your startup’s brand, choosing the right filing basis for your trademark application isn't just a procedural step—it's a strategic decision that affects how you'll leverage your brand in the market.

When you’re setting up the foundation of your startup’s brand, choosing the right filing basis for your trademark application isn’t just a procedural step—it’s a strategic decision that affects how you’ll leverage your brand in the market.

This choice reflects not only your current business activities but also your future plans. Let’s explore how selecting the most appropriate filing basis can serve as a growth lever for your startup.

Making Informed Choices to Support Business Dynamics

Choosing the right filing basis for your trademark is much more than a checkbox in your business setup. It’s a decision that intertwines with your business’s growth trajectory and operational dynamics.

Understanding the subtleties of each filing option enables you to align your intellectual property strategy with your immediate and long-term business goals, making your trademark a tool for business development rather than just protection.

Prioritizing Flexibility in Early Stages

For startups, flexibility is key. Opting for an “Intent to Use” filing basis can provide that flexibility by securing your trademark rights before your product or service hits the market. This strategic choice allows you to navigate the unpredictable waters of launching a new venture without the worry of someone else beating you to the punch in securing a trademark.

It acts as a holding pattern, ensuring that you have the legal backing to focus on product development and market strategies without rushing to launch prematurely just to claim trademark rights.

Adapting to Market Realities

As your startup evolves, your approach to trademark filing should adapt to the changing landscape of your business and market. If your initial product launch has expanded into new markets or you’ve diversified your offerings, the “Use in Commerce” basis can solidify your footprint in these areas.

This adaptation not only secures your expanded operations but also signals to the market and your competitors that you are a stable and established entity, enhancing your credibility and competitive stance.

Enhancing Business Agility with Proactive IP Management

Proactive intellectual property management involves anticipating future business changes and aligning your trademark strategy accordingly. For instance, if you plan to expand internationally, understanding and utilizing the “Foreign Application” and “Foreign

Registration” bases can ensure that your U.S. trademark efforts are synchronized with your global expansion plans. This foresight in IP management enhances your agility and readiness to enter new markets confidently and securely.

Leveraging IP for Strategic Partnerships

In the realm of strategic growth and partnerships, trademarks can be pivotal. They not only protect your brand but also serve as valuable assets in negotiations and partnerships.

A well-established trademark portfolio can make your startup a more attractive partner or acquisition target by reinforcing the uniqueness and protected status of your offerings. This strategic asset amplifies your negotiating power, enabling better terms and fostering more lucrative and secure partnerships.

Aligning Your Filing Basis with Business Objectives

Each filing basis under the United States Patent and Trademark Office (USPTO) has distinct requirements and implications for your business strategy. Selecting between “Use in Commerce” and “Intent to Use,” for instance, should align with your product launch timelines and marketing strategies.

If your product is market-ready and being sold, “Use in Commerce” solidifies your claim. However, if you are still in the developmental stages but plan to launch soon, “Intent to Use” secures your mark until launch.

Tailoring Your Approach Based on Product Readiness

For startups whose products are already in the market or ready to launch, selecting the “Use in Commerce” basis can immediately strengthen your legal footing and consumer perception.

This filing basis is directly linked to actual sales or transactions, which solidifies your market presence and provides tangible proof of your trademark’s use in commerce. It’s particularly effective for securing your brand if your market strategy depends heavily on early consumer adoption and presence.

On the other hand, if your product is in the development stage or if you’re pivoting your business model, the “Intent to Use” filing basis may be more appropriate. This allows you to secure trademark rights before your product or service is commercially available, which is crucial in industries where development cycles are long but market trends move quickly. It ensures that once you are ready to launch, your brand is already protected, avoiding potential conflicts or the need to rebrand due to trademark issues.

Strategic Planning for Future Expansion

Looking ahead is crucial when aligning your filing basis with business objectives. For instance, if you plan to expand your product line or enter new geographic markets, understanding how to leverage both domestic and international trademark protections can facilitate this growth.

Startups aiming for international markets should consider how foreign application and registration bases might align with their long-term business strategies, ensuring they’re not just protected at home but also in overseas markets that present significant business opportunities.

Leveraging Legal Protections to Support Business Goals

The choice of a filing basis should also be seen as a tool to leverage legal protections that support your business goals. For example, a startup with a strong online business model would benefit from ensuring that their trademark is protected against potential cybersquatting or similar issues. This proactive approach not only protects the business but also enhances its operational stability by minimizing legal distractions.

Synchronizing with Marketing and Branding Efforts

Your trademark filing strategy should be synchronized with your marketing and branding efforts. The timing of trademark registration can impact brand launches, marketing campaigns, and overall brand strategy.

A well-timed trademark registration can amplify your marketing efforts, allowing you to promote your brand with the confidence that it is fully protected. This synergy between trademark strategy and marketing not only enhances brand visibility but also fortifies the brand’s credibility and legitimacy in the eyes of both consumers and competitors.

Continuous Evaluation and Adaptation

As your startup evolves, so too should your approach to trademark filing. Regularly re-evaluating your filing basis in light of new products, services, or markets can ensure that your trademarks continue to align with your business objectives.

This ongoing adaptation is crucial for maintaining an edge in dynamic markets where business strategies and objectives may shift in response to changing industry conditions, consumer preferences, or competitive landscapes.

By thoughtfully aligning your trademark filing basis with your business objectives, you not only ensure that your intellectual property strategy supports your current operations but also lays a robust foundation for future growth and adaptation.

This strategic alignment is essential for startups that must navigate both the complexities of IP law and the challenges of establishing a foothold in competitive markets.

Leveraging the Filing Basis for Market Entry

For startups planning to enter the market, the "Intent to Use" basis can be particularly beneficial.

For startups planning to enter the market, the “Intent to Use” basis can be particularly beneficial.

It allows you to stake a claim on your trademark before you have actually launched your product or service, providing you the flexibility to complete your market preparation without losing your trademark rights. This is crucial in fast-moving industries where getting to market first can be a significant advantage.

Tailoring Your Entry Strategy with Intent to Use

Choosing the “Intent to Use” filing basis can be a game changer for startups poised at the brink of entering the market. This approach allows you to claim and secure your trademark before your product or service is commercially available, which is especially valuable in industries where timing and market presence are crucial.

By securing your mark early, you effectively place a stake in the ground, signaling your upcoming entry to competitors and establishing your presence in the consumer’s mind.

Aligning Trademark Strategy with Product Launches

For many startups, the journey from concept to market can be fraught with delays and uncertainties. The “Intent to Use” filing basis aligns your trademark strategy with your product development and launch timelines, ensuring that you have the legal protections for your brand when you are ready to launch.

This alignment is crucial because it provides a safety net, allowing you to finalize your offerings without rushing through critical stages of development and testing that ensure product quality and market fit.

Creating Market Awareness and Building Anticipation

Securing a trademark on an “Intent to Use” basis also plays a significant role in marketing and brand positioning strategies. It allows you to start building brand awareness and generating market anticipation before your actual launch.

This can be particularly effective in saturated markets, where establishing a distinct brand identity early on can lead to a stronger market debut. Pre-launch marketing efforts, bolstered by trademark security, can include teaser campaigns, pre-orders, and strategic partnerships, all aimed at creating buzz and excitement around your brand.

Facilitating Smoother Market Entry

When you’re ready to launch, having an “Intent to Use” trademark filed means that one of the major legal hurdles has already been cleared. This smooths the path for a more focused and impactful market entry.

Instead of navigating potential legal complications at the time of launch, you can direct your efforts towards operational and sales strategies that will better establish your product or service in the market. This smoother entry can make a significant difference in how quickly you can scale and establish market share.

Mitigating Risks of Market Entry

The early trademark filing under the “Intent to Use” basis also mitigates risks associated with market entry. By legally securing your brand identity upfront, you reduce the risk of market confusion and protect against potential infringements that could divert your customer base or dilute your brand’s strength.

This proactive approach to trademarking ensures that when you enter the market, you do so with a clear, legally protected brand that is poised for success.

Navigating International Waters with Foreign Application and Registration Bases

If your startup operates globally or plans to expand internationally, understanding the “Foreign Application” and “Foreign Registration” bases is essential.

These bases not only facilitate the alignment of your U.S. trademark efforts with your global strategy but also ensure that you enjoy a seamless trademark protection process across borders. This can be a game-changer for startups that operate in multiple countries or are looking to enter international markets.

Crafting a Global Trademark Strategy

When your startup is ready to take its products or services global, understanding and utilizing the foreign application and registration bases becomes essential. This strategy allows you to align your U.S. trademark efforts with your international expansion goals.

The key to a successful global trademark strategy is to first identify your primary markets outside the U.S. and understand the specific trademark laws and protections each of these countries offers.

Prioritizing Markets and Customizing Approaches

Decide which markets are crucial for your brand’s growth and prioritize them in your trademark filing strategy. This involves not only looking at current markets but also anticipating future business areas.

Customizing your approach for each market based on local consumer behavior, legal environment, and competitive landscape is critical. This means potentially modifying your brand elements to fit cultural nuances and legal requirements, ensuring that your trademark is both protectable and resonates with local audiences.

Engaging with Local Experts

For each target market, consider consulting with local trademark attorneys who specialize in the intellectual property laws of those countries. These experts can provide invaluable insights into the specific nuances of local trademark laws and help navigate the filing process.

They can also act as your representatives in dealing with local trademark offices, which can streamline the application process and increase the likelihood of securing your trademarks without conflicts.

Timing Your Applications Strategically

Timing is crucial when filing for trademarks internationally. Utilizing the foreign application basis can grant you a priority date that is the same as your initial filing date in another country.

This can be particularly advantageous when entering highly competitive markets. Strategically timing your applications can protect against potential competitors who might file for similar trademarks upon noticing your entry into the market.

Leveraging International Agreements

Familiarize yourself with international agreements such as the Madrid Protocol, which simplifies the process of applying for trademark protection in multiple countries through a single application.

Understanding these agreements can significantly reduce the complexity and cost of securing international trademarks. They allow for a centralized system to manage your trademarks, making it easier to maintain and enforce them across different countries.

Preparing for Variability in Registration Processes

Expect variability in the registration process across different countries. Each country has its own set of rules regarding what can be trademarked, the processes for registration, and the protection that the registration offers.

Being prepared for this variability will help you manage expectations and plan better for market entries. It is important to remain flexible and adapt your strategies according to the responses from different trademark offices.

Continuous Monitoring and Enforcement

Once your trademarks are filed and registered, the task shifts to monitoring and enforcing them. Set up a system for regularly monitoring the use of your trademarks internationally to ensure that there are no infringements.

Enforcement can vary greatly between countries, so develop a clear plan for how you will handle potential infringements. This might involve working with local legal counsel to address issues as they arise.

Building a Scalable Trademark Portfolio

As your startup grows, your trademark strategy should evolve too. Aim to build a scalable trademark portfolio that can expand with your company. This means regularly assessing your trademark needs as you introduce new products or enter new markets, and making sure your trademark protections keep pace with your company’s growth.

Securing Your Brand Early On

Early trademark filing, whether based on actual use or intent to use, protects your brand from potential infringements and establishes your presence in the market.

Early trademark filing, whether based on actual use or intent to use, protects your brand from potential infringements and establishes your presence in the market.

It sends a clear signal to competitors and the market about your serious intent to safeguard your intellectual property, which can deter potential trademark infringements and establish your brand’s credibility early in its lifecycle.

Establishing Brand Identity from Day One

Securing your trademark early is pivotal for startups aiming to carve out a distinct identity in a crowded marketplace. This is not merely a legal formality but a foundational step in building your brand’s public image and reputation.

By protecting your brand through trademark registration, you demonstrate to customers, competitors, and investors that you value and protect your intellectual property, which is often a startup’s most valuable asset.

Creating a Barrier to Entry

A trademark serves as a barrier to entry for competitors by preventing them from using similar signs or logos. This protection helps maintain your market position and allows your brand to flourish without the risk of confusion or dilution by competitors.

For a startup, where differentiation is key to survival and success, a trademark acts as a safeguard, ensuring that your unique brand voice and identity remain exclusively yours.

Enhancing Brand Equity

Early trademark protection enhances your brand’s equity. It adds a layer of credibility and seriousness to your business operations. Consumers often associate trademarked products with quality and legitimacy, which can drive higher customer conversion rates and foster brand loyalty

From a marketing perspective, a trademark is not just a symbol of authenticity but also a brand enhancement tool that attracts positive consumer perceptions.

Facilitating Brand Expansion

For startups looking to expand, having a registered trademark can simplify the process of entering new markets. It reduces the risk of trademark conflicts and provides a clear path to market entry in different regions or product lines.

Additionally, a trademark can be a valuable asset when seeking investment or partnerships, as it shows potential stakeholders that you are thoughtful and proactive about protecting your business assets.

Leveraging Trademark Protection in Marketing Strategies

A trademark isn’t just a legal tool—it’s a marketing asset. Featuring the ® symbol in marketing materials can enhance your brand’s prestige and send a strong signal about your professionalism and the exclusivity of your offerings. Utilizing trademark protection in your marketing strategies can significantly impact how consumers and competitors perceive your brand.

Mitigating Risks

Starting with a strong trademark strategy mitigates potential risks that could arise from trademark disputes or infringement claims. By securing a trademark early, you preempt potential legal battles that could drain resources and distract from your core business activities.

For startups, where resources are often limited, avoiding such disputes can be crucial to maintaining focus and momentum.

Preparing for Business Scaling

A robust trademark protection strategy is crucial as you prepare to scale your business. It ensures that as your business grows, your brand remains protected across various jurisdictions and product lines.

This preemptive measure not only secures your existing market share but also paves the way for a smooth expansion, free from the hurdles of rebranding or litigation over intellectual property disputes.

Streamlining the Path to Registration

Understanding the nuances between different filing bases helps streamline the trademark registration process. By selecting the correct basis that aligns with your current state of business, you can avoid unnecessary delays and complications.

For instance, if you opt for an “Intent to Use” basis without a clear plan for commercialization, you might face hurdles moving to registration. Knowing these subtleties can save time and resources.

Use in commerce vs. Intent to use

While "use in commerce" and "intent to use", are the two types of filing basis, they differ.  

While “use in commerce” and “intent to use”, are the two types of filing basis, they differ.  

Use in commerce

Your trademark may be used in commerce to sell or transport your goods outside of your state, or provide services to customers living in other states.

You might, for example, grow wheat in Kansas and then sell it to buyers in Massachusetts and Mexico. You might also offer website design services to customers in Georgia or Guam from your Oregon home. 

You will need to prove that your trademark is being used in commerce in order to register it. You will need to provide a specimen of how you use your trademark. Also, you will need to include the date that you used your trademark in commerce as well as the date it was used anywhere else.

Leveraging “Use in Commerce” for Established Products

For startups that have already launched their products or services, the “Use in Commerce” basis offers a direct route to trademark protection. This filing basis is applicable when your brand is already active in the marketplace, engaging in transactions that cross state lines or affect commerce regulated by Congress.

The Tactical Advantages of “Use in Commerce”

Filing under “Use in Commerce” not only secures your trademark but also reinforces your market presence. It provides legal acknowledgment that your brand is active, which can deter infringement and build stronger brand recognition.

For startups looking to expand or scale, having a registered trademark under this basis can provide a competitive edge, facilitating smoother entries into new markets and business ventures.

Strategic Brand Growth with “Use in Commerce”

Using this filing basis can serve as a foundation for expanding your brand’s footprint. It supports efforts to scale operations, diversify product lines, and enter into partnerships or licensing agreements. A trademark that is actively used and protected is a valuable asset that can be leveraged in various business negotiations and expansions.

Intent to Use

Intent to Use means that although you have not yet used your trademark in commerce it is likely that you will within the next three to five years.

Intent to Use means that although you have not yet used your trademark in commerce it is likely that you will within the next three to five years.

You might be planning to sell jewelry but are only at the point where you can source your materials. However, you haven’t yet started selling or making jewelry. You might be currently providing personal training services to clients within your state. However, you will be expanding your services into neighboring states in the next 12 months.

While you can apply for a trademark registration on an intent-to use basis, it is not possible to actually register your trademark until you have evidence that your trademark has been used in commerce and the appropriate TEAS form are filed.

Navigating Early Stage Brand Development with “Intent to Use”

For startups at the threshold of entering the market, the “Intent to Use” (ITU) filing basis is a strategic tool that can not only secure your brand but also align it with your business launch plans.

This filing basis is particularly beneficial for startups that are still finalizing their product offerings or market strategies. ITU allows you to claim a trademark before your goods or services are commercially available, providing a safety net during your developmental phase.

Why “Intent to Use” Matters

Choosing ITU is about more than just protecting a name; it’s about setting the stage for your market entry. By filing under ITU, you signal to potential investors and competitors that you are serious about your brand and are taking proactive steps to protect it.

This can enhance your credibility and attract more attention or funding, as it shows foresight and strategic planning.

Transitioning from ITU to Actual Use

One of the crucial steps after filing under ITU is transitioning to actual use. This involves not only launching your product or service but also demonstrating this use in commerce to the USPTO to complete the registration process.

This transition is a critical phase where your startup moves from planning to execution, turning your business concepts into market realities.