A trademark application can be filed under several bases in order to determine the priority date once the mark is registered or if common-law trademark rights are asserted. The two most common filing bases are 1) having a bona fide intent to use a trademark in interstate commerce or 2) actual use of a trademark in interstate commerce.
Filing a mark when the applicant has a bona fide intent to use a mark in commerce, the applicant must show the use of the mark eventually. This means that the applicant does not own a trademark until the registration is processed.
An application based on use in commerce must be filed by the party which owns the mark on the application filing date. Trademark Act Sec. 1(a). In an application based on an allegation of an intent to use, before the mark can be registered the applicant must file an amendment to allege use or a statement of use which states that the applicant is the owner of the mark. Trademark Act Sec. 1(b); Trademark Rules 2.76(b)(1)(i) and 2.88(b)(1)(i).
Because in an intent to use application the mark has not yet been shown to be used as a mark, and because ownership of a mark arises through use of the mark, Trademark Act Sec. 1(b) does not refer to “the owner of a trademark,” as does Trademark Act Sec. 1(a). Am. Forests v. Sanders, 54 USPQ2d 1860, 1861-1862 (TTAB 1999), aff’d, 232 F.3d 907 (Fed. Cir. 2000). An intent to use application must be filed by the party entitled to use the mark in commerce on the application filing date, and the application must include a verified statement that the applicant has a bona fide intention to use the mark in commerce. Trademark Act Sec. 1(b). When the person designated as the applicant was not the person with a bona fide intention to use the mark in commerce at the time the application was filed, the application is void. Am. Forests v. Sanders, 54 USPQ2d at 1864.
This means that an applicant should be aware of the very radical differences between filing a trademark application with a bona fide intent to use a trademark in interstate commerce instead of filing a trademark application with a mark that is already used in commerce. The applicant cannot claim ownership of a trademark when the application is only filed with the bona fide intent. The applicant must actually use the mark in commerce.