In Part I, we focused on (i) the importance of early brand protection and (ii) the clearance risk assessment. Here, in Part II, we’ll dive into (i) the actual trademark application and (ii) key differences between the primary trademark application forms.

Now, I’m letting you know now, the trademark application itself is not difficult, what isssss difficult, is understanding the implications behind your responses.  

Unfortunately, I don’t think anyone told Amanda what I’m about to tell you. But if they had, she may have saved some time, money, and face. Amanda’s story will help us understand the importance of correctly and truthfully selecting an in-use or intent to use application.

In-use or not-in-use, that is thee question. More importantly, it’s one of thee first questions you should ask yourself when preparing a trademark application because use, or more specifically, use in commerce, is the foundation for determining which application you will use to file your trademark. 

Now, let’s break down what “use in commerce” means.   

The Use In Commerce Breakdown

Section 45 of the Trademark Act defines “commerce” as all commerce that can be regulated by Congress. Congress regulated commerce (“CRC”) includes (i) state to state commerce (“Interstate Commerce”) and (ii) commerce between a state and a foreign country, tribe, or U.S. territory. So, at first glance, intrastate commerce does not appear to satisfy the CRC requirement and, thus, using your mark solely in one state would be insufficient to support federal trademark registration. However, case law establishes that intrastate commerce is sufficient when the activity, taken in the aggregate, has a substantial impact on interstate commerce, thereby satisfying the CRC requirement. 

To put it simply, a local farmer who sells products solely within his state may seem too small to affect interstate commerce on his own. However, when you look at all local farmers doing the same thing together, their combined activities can have a significant effect on interstate commerce. Because of that combined impact, even a single local farmer can satisfy the CRC requirement. 

Satisfaction of the CRC requirement could go either way because it is fact specific. But it is likely that a mark being used in the ordinary course of business, whether it be through intrastate or interstate commerce, will satisfy the CRC requirement, and therefore, be worthy of a Section 1(a) trademark application (aka a use in commerce application). 

If you are not yet using your mark in the ordinary course of business, then you should use the Section 1(b) trademark application, also known as the intent–to-use application.  Once the good or service has been introduced into the market, a statement of use (“SOU”) will be required to convert the Section 1(b) application to a Section 1(a) application. An SOU must be filed before the USPTO provided deadline, otherwise the USPTO will issue an abandonment notice for the mark that has not been introduced into the market and proceeded to the Section 1(a) application. Luckily, the USPTO provides Section 1(b) applicants with the opportunity to file up to five six-month extensions before an application is listed as abandoned, which provides applicants with more than enough time to get their product or service in the market prior to registration.

Now, let’s back track a bit. Before an SOU is required, the USPTO will review the filed Section 1(b) trademark application and, if satisfactory, will publish the trademark for opposition. This publication period is where Amanda got all tied up. 

But let’s make one thing clear, first. This trademark series is not a Perez Hilton gossip column (which would probably be a bit more entertaining). Instead, it is an educational resource where we use trademark case studies to highlight learnings to the general public.

The Tale of Amanda

Amanda was a realtor, and likely an ambitious one, as most realtors tend to be. So, naturally, Amanda decided she wanted to go from realtor to broker and do so under the name “NationStar”. She even registered a website domain for the name. Eventually, a third party came along and attempted to register the same domain but found that it had already been taken by Amanda. The third party made Amanda an offer to purchase the domain, but Amanda rejected it and soon after filed a trademark application for “NATIONSTAR”. When Amanda filed her application, she did so by utilizing the Section 1(a) application, which requires the inclusion of (i) dates of use and (ii) specimen. 

Dates of use and specimen are the two key differences between a Section 1(a) and a Section 1(b)) application. Let’s dive deeper into what “Dates of Use” and “Specimen” are and when they’re used. 

Dates of Use

The Section 1(a) application and an SOU asks an applicant for (i) the date of first use anywhere and (ii) the date of first use in commerce. These dates are often the same, but they don’t have to be. Distinctly, date of use questions are not included in the initial Section 1(b) application because it is understood that the goods or services have yet to be used in commerce. This is distinct from an applicant who is at the SOU phase or filing a Section 1(a) application because the applicant is essentially alleging that the mark is being used in commerce. 

• Date of first use anywhere 

When the USPTO asks for the date of first use anywhere, it is not a trick question. They really do mean anywhere. Think, when did I create the first mockup for this mark? When did I add the mark to my IG bio with a little “coming soon” right next to it – that, right there, is the date of first use anywhere. 

• Date of first use in commerce

The date of first use in commerce is (i) the date you sold your first good, (ii) the date of your first advertisement for an existing service, or (iii) the date of your first service. Again, this usage of the mark must occur in the ordinary course of business. This means an applicant cannot create a fake advertisement or mockup to satisfy this date of use in commerce field. Here, honesty is the best policy.

Specimen

“Specimen” illustrate how the mark is presented to the public in commerce. Unlike the Section 1(a) application, a request for specimen is not included in the initial Section 1(b) application for the same reasons that dates of use are also not requested – the mark has not been used.

A non-exhaustive list of acceptable specimen is provided below. 

Goods:

• a label or tag attached to your good that shows your trademark;
• a product container or packaging that shows your trademark; or
• a website where your goods can be purchased or requested showing your trademark.

Services:

• an advertisement, brochure, website printout or other promotional material that shows your trademark used for the services;
• a business sign where the services are rendered that shows your trademark; or
• a service vehicle that shows your trademark.

Now, back to Amanda’s Mishap.

The issue with Amanda filing a Section 1(a) application was Amanda was still operating solely as a real estate agent. This was evident because she had yet to obtain her broker license, meaning no brokering could be happening in Amanda’s case. 

Yet, even still, Amanda filed her Section 1(a) application, including dates of use and specimen, for NATIONSTAR with the following description:

Real estate brokerage; rental of real estate; real estate management services, namely, management of commercial and residential properties; real estate investment; residential and commercial property and insurance brokerage; mortgage brokerage; and business finance procurement services, in Class 36.

Now, she might have gotten away with it, but when the trademark was posted for publication,  Nationstar Mortgage LLC, the third party that initially offered to pay Amanda for the domain name, filed an objection. The objection provided that Amanda “did not use the NATIONSTAR mark for any of the identified services prior to the filing date of her application, submitted a fabricated specimen that was not used in commerce at least as early as the application filing date, and thereby knowingly made false statements as to the use of [her] mark with the intent to deceive the USPTO.”

Yikes. 

Once the objection came through, Amanda tried to double back and amend the application to a Section 1(b) filing, but the USPTO asserted “no take backs” and Amanda was found guilty of fraud and her application was refused.

Sigh. And alas, honesty is the best policy. 

When you know better you do better, and that’s exactly what this trademark series is meant to accomplish. The easy part is the application, the hard part is the implications. And, just like this is not a gossip column, it’s also not a scare tactic, just a cautionary tale from your neighborhood trademark attorney.  

Up next – 

1. Part I – First Things First:  Early Detection for Trademark Protection 
2. Part II – Filing a USPTO Application: Things to Know 
3. Part III – After You File a USPTO Application: Corresponding with a USPTO Examining Attorney
4. Part IV – The Wrap Up

¹ A separate blog will be published on trademark ownership and the associated pros and cons.
² Some of the names of the individuals involved in Nationstar Mortgage LLC v. Mujahid Ahmad have been modified. Please review Nationstar Mortgage LLC v. Mujahid Ahmad for additional details.
³ A publication period exists in both the 1(b) and 1(a) application.
In a 1(b) – If no one objects to the application, then an applicant will receive a notice of allowance and from there will have an allotted period of time to file the SOU.
In 1(a) – If no one objects to the application, then an applicant will receive a notice of allowance, and the mark will be registered.
⁴ More on the publication period in Amanda’s Mishap paragraph.
⁵ Appropriate Specimen
⁶ Publication – the period of the application process that allows third parties to file a notice of opposition if they believe registration of said mark would be harmful to them