Use or not, all depends on you!
date: 2017-11-14 Chris Li Read by:

Different from Chinese trademarks, US trademarks are based on "first-to-use" principle.  When filing a new application in US, applicants need to establish a basis for application in compliance with Section 44(d) of the Lanham Act of US, ":......Before an application may be approved for publication, or allowed for registration on the Supplemental Register, the applicant must establish a basis for registration under Sect. 1(a), Sect. 1(b), or Sect. 44(e) of the Act."  There are mainly three kinds of basis to be claimed, which will be discussed today.  

Intent to use

Section 1(b) of the Act: the applicant has a bona fide intent to use the mark in commerce. The intent must be commercially realistic and based on concrete plans, not mere hypothetical desire. The Trademark Act prohibits the assignment of ITU applications to prevent trafficking in trademarks, except as part of the transfer of an ongoing business.

If you have not yet used the mark but plan to do so in the future, you may file based on a good faith or bona fide intent to use the mark in commerce. A bona fide intent to use the mark is more than an idea and less than market ready. For example, having a business plan, creating sample products, or performing other initial business activities may reflect a bona fide intent to use the mark. Under such scenario, the applicant could file an application in US based on the "intent-to-use." Filing under such basis, applicants needs to file statement of use and specimens to show they have actually used the mark in commerce before the mark can be registered.

Use in Commerce
Section 1(a) of the Act: the applicant is using the mark in commerce, either in interstate commerce or in commerce between the U.S. and a foreign country, or in a foreign territory owned by the U.S. (such as Puerto Rico or Saipan).
When filing a new application based on use-in-commerce, applicants needs to provide the date of first use of the mark anywhere and the date of first use of the mark in commerce and specimens showing how you use the mark in commerce when filing.

Home Country Registration

Section 44(e) of the Act: the applicant is a non-U.S. company or person who owns a foreign registration in a country where it has a bona fide commercial establishment.

Filing new application in US based on home country registration requires that the specifications be narrowed down than the home country registration.
Applicants could base on more than one basis to file a new application in US, e.g. three bases in a multi-class application or even in one class application. What’re more, the basis could be changed during the trademark prosecution.

However when choosing the basis for filing, attention needs to be paid on the specific situation. The significant difference between the "Intent to use" and "Use in Commerce" is whether the applicant has used the mark in commerce over all its designated goods/services. However consideration needs to be taken that application takes more time for "intent-to-use" applications, because applicants needs to file statement of use before the mark is approved.   Thus assuming a mark is expected to be used commercially in US in short period; waiting to file based on "use in commerce" will save time for registration. However every coin has two sides, it is also risky that third parties file similar marks before you file, and encounters citations.  

For the home country registrations, what the applicants should think about is whether the specifications could cover the use in US, and whether the home country registration certificate could be provided.

In all, no matter which basis do you plan to base in a US application, the bone fide intention to use the mark over all its goods/services is indispensable.

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