Filing a trademark application involves strategic choices regarding the basis for registration, which determines the priority date and potential common-law trademark rights. The two primary filing bases are:
1. Bona Fide Intent to Use
When filing under the basis of having a bona fide intent to use a trademark in interstate commerce, the applicant commits to eventually utilizing the mark. It’s crucial to note that ownership of the trademark does not commence until the registration process is completed. The application, under Trademark Act Sec. 1(b), must be filed by the entity entitled to use the mark in commerce on the application filing date. Before registration, the applicant must submit an amendment to allege use or a statement of use, confirming ownership of the mark.
In this scenario:
- Ownership arises through use of the mark.
- The application must be filed by the party entitled to use the mark at the filing date.
- Verification of a bona fide intention to use the mark in commerce is mandatory.
2. Actual Use in Commerce
Contrastingly, an application based on the actual use of a trademark in interstate commerce, filed under Trademark Act Sec. 1(a), must be submitted by the entity that already owns the mark on the application filing date. Unlike the bona fide intent basis, ownership is established immediately upon filing.
Key points to consider:
- The mark must be in use as of the application filing date.
- No amendment or statement of use is required to confirm ownership, as it is inherent in the filing.
It is essential to grasp the profound disparities between filing under a bona fide intent to use and filing with a mark already in use:
- Ownership rights do not materialize with a mere intent to use filing.
- The mark must be actively used in commerce to claim ownership.
- Failure to have the bona fide intention to use the mark at the time of filing renders the application void.
Understanding these distinctions ensures that applicants make informed decisions based on their current use status, preventing complications and securing their trademark rights effectively.
Do you have questions about your trademark or your trademark application? Contact us at firstname.lastname@example.org or call at 914-908-6757.