Commercial Use vs. Intent to Use of Trademarks

 
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This post explores how Use in Commerce Basis (aka “commercial use”) of a trademark differs from Intent-to-Use Basis when registering your trademark with the USPTO. The closely related issues of deciding whether to elect Section 1(a) or Section 1(b) as the filing basis for a trademark application, is intricately connected and will also be considered. To switch things up a bit, I want to approach this topic using a hypothetical scenario.

But before we proceed, I have a brief disclaimer and a request. If possible, try to ignore whether or not the trademarks used in the hypo could actually pass muster to be registered with the USPTO. The names are more so for illustrative purposes. Also, if you’re not really into the hypo approach, feel free to skip ahead (and I will not take offense, I promise).

Jumping right into the hypo…

Imagine that you have a product, a car, that you market and sell under the name “CARBRAND.” CARBRAND is already a registered trademark. You also have a proprietary component part that you make that has always physically been a part of the cars made and sold as CARBRAND cars. You have now decided to name this component part, “COMPONENT-PART,” and you would like to market, sell, and distribute the component part under the name COMPONENT-PART. At this point, you want to move forward immediately to register the COMPONENT-PART trademark with the USPTO.

Can you think of a few implications or potential issues that may arise in the upcoming trademark filing?

The first issue that you may have picked up on is that something strange is happening with the “commercial use” in our hypothetical. Physical use of a good is not the same as commercial use of a trademark. Although the component part has been physically in existence and physically in use as a physical component of the CARBRAND cars, the component part was not going by the name COMPONENT-PART. So, physical use of the component part, is not the same, and not to be confused with, the name COMPONENT-PART being used in commerce.

Next, this preliminary issue will likely have implications for the trademark filing basis that you will select in your USPTO trademark application. There are four trademark filing bases in the USPTO trademark application, but only two are applicable here: 1(a) In Commerce or 1(b) Intent to Use (in commerce). Here’s a brief overview of the official definitions and differences of 1(a) and 1(b) as explained by the USPTO:

  • Use in commerce (Section 1(a) filing basis) – this filing basis means that you have already started using your trademark (mark) in commerce.  Commerce generally means the buying and selling of goods and services; and

  • Intent to use (Section 1(b) filing basis)– this filing basis means that you have not yet used your mark but have a bona fide intention to use the mark in commerce.

Based on the hypo, you do arguably have a bona fide intention and desire to use the COMPONENT-PART mark in commerce, but have not used the actual trademark in commerce. Instead, you have used the component part as a good itself in commerce without the good being previously attached to the trademark.

So this means you will likely have to consider between two options at this point, when selecting a filing basis.

OPTION 1 is to start using the trademark in commerce immediately, and then complete and file your trademark registration application under 1(a) Use in Commerce basis.

OPTION 2 is to go ahead and file your trademark registration application under 1(b)/Intent-to-Use basis first, then start using the trademark in commerce, and THEN after that update your trademark application by filing a Statement of Use, to switch over to 1(a) status and move forward.

2 Big Factors that May Influence Which Approach You Take

There are a variety of unique circumstances that may impact whether you opt to go 1(a) or 1(b), however, the two big ones that jump out are CORPORATE STRATEGY and FEES.

For example, what if you are highly sensitive under cloak and dagger from a competitive standpoint and believe that you must hold your cards close until it’s “go time.” Also there are inherent risks in “immediately” putting the mark in use as used in Option 1. Your immediately may be 1 week, but what if a competitor’s immediately is 3 days, and they file before you do. In that case the competitor may have a “first in time factor” in their favor.

The other consideration will be the fees associated with filing 1(a) or 1(b) basis. Here’s a brief overview on what fees may apply.

Brief Overview of USPTO Fees for 1(a) and 1(b) filing basis:

The USPTO fees for both 1(a) and 1(b) filing bases are very similar.  An attorney would usually use the TEAS Plus Application (which is a lower fee).  As of the date of publication, the USPTO filing fee for the TEAS PLUS for either 1(a) or 1(b) is $225 per class of goods/services. The differences in the fees start to emerge at this point where for a 1(b) basis filing there may be a fee of $125 (per class) for each additional 6-month extension request to file your Statement of Use, and then finally a filing fee of $100 (per class) when you do file the Statement of Use.

In closing…

Whether you’re just here for the love of hypos or a real life scenario brought you here, my parting advice to you is to continue to be resourceful, to research and understand the issues that affect you and your business, and to know when to rely on others to get things done. Best of luck! Thanks for reading.

And now for my usual spiel: This post is not intended to be a substitute for legal advice.  Consult a licensed business law attorney for specific business law questions that you may have.