Nutter's IP Bulletin How-To Series on Branding: How to File a Trademark Application: The Guts of a U.S. Trademark Application (Part 2 of 2)
Posted in Branding, Trademarks

The article in our May edition of the IP Bulletin addressed four of the eight most commonly asked questions that arise when completing a U.S. trademark application filing. More particularly, we considered the trademark application form that should be used, the classes of goods or services to include in the application, the items included in the description of goods and services, and appropriate and acceptable specimen of use to be included as part of the application. The other four most commonly asked questions are tackled in this article, including: (5) should I include color or design features as part of my trademark application; (6) what is my filing basis; (7) what is my date of first use; and (8) what other considerations should I be making when preparing my U.S. trademark application?

U.S. Filing Question Number 5—Should I Include Color and Other Design Features as Part of My Trademark Application?

A trademark owner may believe with all her heart and intend with all her brain that her mark will always and forever by displayed in mauve letters and upper and lower case Old English typeface. So she should apply to register her mark in mauve letters and upper and lower case Old English typeface (a “design mark”). But she may also want to apply for the mark in black block letters (a “word mark”). To do otherwise is to ignore the inexorable phenomenon of "trademark creep."

"Trademark creep" is like an owner watching her adorable, smiling little boy turn into a pimpled, mumbling, sullen teenager. It happens gradually and inevitably, and she asks herself, where did the original version go? Mauve turns into green, upper and lower case Old English typeface morphs into all upper case Skinny lettering. And the problem is this: when the owner goes to maintain her mauveOld English registration, she won’t have a specimen of use; she will have only greenSkinny specimens of the mark. She will lose her registration.

Whereas, if she had also filed for her mark in black block all upper case letters, then both the mauveOld English and the “crept” greenSkinny versions would be specimens of use, and her mark would remain registered.

Trademark creep. It happens. And it could happen to you.

U.S. Filing Question Number 6—What Is My Filing Basis?

A U.S. trademark owner can file her application based on (a) intent to use (ITU) (referred to as Section 1(b)), or (b) actual use (referred to as Section 1(a)), of her mark. There may be times when she will have actual use to serve as her basis, e.g., if her product is already out in the marketplace and she is adopting a new mark for it. More often, she will have her mark selected before her first product sale. In this more frequent case, she should avail herself of the ITU application.

An ITU filing serves as immediate notice of the owner’s rights and establishes the owner’s “filing date,” to which eventual priority will “relate back,” upon registration, which can be months away. At any time (with a small exception most owners do not need to worry about) during the processing of an ITU application, the applicant can submit her Allegation of Use form for the applied-for mark. This filing includes a specific use (see the discussion related to specimen in the article previous to this one) and entails a $100 filing fee per class. Owners have three years from the date an ITU application is allowed by the U.S. Patent and Trademark Office ("USPTO") to document actual use, and must pay an additional $150 every six months to continue to hold their place in line. The additional $100 step (as compared with an actual use application, where use is alleged at the outset and thus no fee for filing an Allegation of Use form exists), and the additional $150 steps as needed should never deter our trademark owner from filing based on ITU and obtaining the earliest possible filing date when the owner maintains a bona fide intent to use the mark. Just as football is a game of inches, trademark priority is a game of minutes.

Similar use and intent-to-use filing options for trademark applications first filed in another country are also available to a trademark owner. The appropriate sections of the Trademark Act for such applications are Section 44(d) (foreign application exists for the same goods/services) and Section 44(e) (foreign registration exists of the same goods/services). Many countries, including the U.S., provide that if an applicant files as a foreigner in a foreign jurisdiction within six months of the date of its domestic filing, then the foreign filing will be deemed to have been made on the same date as the applicant's original domestic filing. Because “first in time, first in right” applies in trademarks, a foreign-filing owner should take advantage of these grace periods.

U.S. Filing Question Number 7—What Is My First Use Date?

For applications relying on actual use as a filing basis, a user must supply both a “first use of mark anywhere” and “first use of the mark in commerce.” In actuality, these two phrases should be “first use of mark in commerce anywhere” and “first use of the mark in interstate commerce” because that is what they are intended to cover. As indicated in our previous article related to where to file, in 2014 the distinction between “use in [regulable] commerce” and “use anywhere [our locavore cookie baker]” is likely negligible. Often, use in commerce covers both of these requested dates. However, applicants may be able to justify an even earlier “first use of mark anywhere” date to the extent use was made publicly but locally in commerce, or perhaps even in preparation for use in commerce (e.g., use of the mark in a potential manufacturing agreement sent to a local manufacturer). Additionally, it is worth remembering that in the context of the application, the asserted “first use” dates are not binding priority dates, and thus owners can at some later time prove that actual use occurred before either of the “first use” dates supplied as part of the application. Notably, the language of the trademark application for the “first use” dates is “at least as early as [INSERT DATE].”

U.S. Filing Question Number 8—Anything Else I Should Keep in Mind?

While inevitably you will pick-up tricks of the trade with each application you file, one distinction that can be important to remember is the distinction between contact information of the applicant and contact information of the prosecuting attorney. The USPTO electronic application includes areas for both types of information, although not all of this information is required. A trademark application is a publicly available document, and thus you should remember that any information provided as part of the application is accessible to the public. While you likely want to provide contact information such as a telephone number and e-mail address that the USPTO, and in particular the examining attorney, can use to contact you to help progress prosecution of the application, you may not want to provide similar contact information for, e.g., a client, particularly if that information is a personal telephone number or e-mail address.

As the current electronic application is set up, the application first requests the contact information of the applicant. While the applicant’s street or mailing address is required, the applicant’s telephone number and e-mail address are not. However, if you fail to enter the applicant’s telephone number, the following error message will appear on the next screen "strongly recommending" you provide this information to help the examining attorney.

Error Message

You can ignore this error message and select the "Continue" option, as any information the examining attorney wants about the client should come through the applicant’s attorney. An attorney can provide their contact information, including e-mail address and telephone number, in a later portion of the electronic application. As noted above, it is recommended to provide contact information as part of the application so that the examining attorney can easily contact the prosecuting attorney should the examining attorney believe such contact will expedite prosecution of the application.


Behind every world-famous brand lies its earlier life-form as a mere registered trademark.

In our next article, we will provide some practical tips for prosecuting your now-filed trademark application.

This update was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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