When filing a Trademark registration, you need to determine which of the five (5) types of application is best for you. It is important to determine the right application for your situation as each have different fees and requirements.
The following are the different types of Trademark applications and when they are appropriate:
Section 1(a) Application based on use in commerce
Filings based on Section 1(a) are applicable when you are currently using the mark in commerce within all the goods/services class you wish to register. You will be required to provide the date in which you began using the mark and a specimen showing how the mark is actually being used with the goods/services.
Section 1(b) Application based on intent to use
Filings based on Section 1(b) are applicable when you have not yet started using the mark for your goods/services. You must use the mark and complete an additional filing before you will be granted full registration. Generally, you will be required to use the mark and make the necessary filings within a limited time period. So, be mindful of the time requirements to avoid the risk of having your application declared abandoned.
Section 44(d) Application based on foreign application
Filings based on Section 44(d) are applicable when you have filed for the mark in a foreign country and now wish to file for registration in the United States based on the foreign filing’s filing date. Applications based on foreign applications are required to meet very specific requirements, so you should counsel with an attorney to determine whether you are able to meet these requirements.
Section 44(e) Application based on foreign registration
Filings based on Section 44(e) are applicable when you have a mark registered in a foreign country and now wish to file for registration in the United States based on that Foreign registration. Similar to 44(d) filings, this sort of filing requires that you meet very specific requirements.
Section 66(a) Application based on the Madrid Protocol
Filings based on Section 66(a) are applicable when you wish to extend protection of your mark in multiple different countries under the Madrid Protocol.
Deciding which of the five applications to use will depend on a number of factors, including your current use of the mark, business goals, and target audience. It is best to always consult with an attorney to determine which application is best for your needs.
Disclaimer: This article should not be taken as legal counsel and readers should not base any legal decisions solely on the article without consulting an attorney.