Maximizing Your Trademark Protection: A Guide to Section 1B Registration

May 9, 2023
min read

Maximizing Your Trademark Protection: A Guide to Section 1B Registration

J. Greg Tinch

This post is about your paths to owning a federal trademark registration. There are two paths and both may inform your trademark and brand management strategy.  

Trademark registration is a legal process used to protect the exclusive use of a mark, such as a brand name, logo, or slogan, in association with the sale of goods or services. The process of registering a trademark involves filing an application with the U.S. Patent and Trademark Office (USPTO) and meeting certain requirements. One of the most important requirements is that the trademark must be used in commerce. Trademark registration can be based on either actual use or intent to use.

Trademark registration based on actual use (section 1A) requires that the mark must be actively used in the marketplace in connection with the goods or services for which it is registered. This means that the trademark must be used in the promotion or sale of those goods or services. For example, a company that sells shoes must use the trademark in the advertising, marketing, and sale of the shoes in order to register the trademark.

Even if you are not actively using your mark in commerce you may still be eligible for trademark registration. Trademark registration based on intent to use (section 1B) requires that the trademark must still be used in commerce, but there is no requirement that the mark must be actively used in the marketplace. This means that the trademark must be used in the promotion or sale of those goods or services in the future, with a bona fide intent to use the trademark. In other words, registrations under section 1B are for marks that the owner intends to use to distinguish a brand.

The components of your application will be the same:

(1) file an application specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of the mark, the date of the applicant’s first use of the mark in commerce, the goods in connection with which the mark is used, and a drawing of the mark;

(2) submit a verified statement that (i) the applicant owns the mark; (ii) the contents of the application are true and accurate; (iii) the mark is in use in commerce; and (iv) the applicant does not know of others with rights to use the mark or close variants; and

(3) pay the government's application fee.

The key difference is that you do not have to submit a specimen demonstrating your use of the mark with a Section 1B application.  Instead, you submit your specimen of use after the application is processed. Section 1B registrations become Section 1A registrations after the application is examined, allowed, and the applicant files an acceptable specimen proving that the applicant made good on intent and is actually using the mark.

So if you are not using your mark in commerce then why file an intent to use application? There are several advantages to filing an intent to use application. First, it allows the applicant to reserve the right to use the trademark before actually using it in the marketplace. This can be beneficial in cases where the applicant may not yet be ready to use the trademark but wants to secure the rights to it in the future. Second, the applicant can use the “intent to use” application to begin the registration process before the trademark is actually used in commerce. This can help to expedite the registration process, allowing the applicant to secure the rights to the trademark sooner. Finally, the “intent to use” application also allows the applicant to reserve the rights to the trademark even if the mark is never actually used in commerce.

The filing date of a Section 1B becomes the effective filing date if the application matures into a registration. When a Section 1B application matriculates into a trademark, the registration has nationwide priority over all others except:  (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; and (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application.

The earlier you file your application the more likely that your rights will have priority over the rights of a competitor.  Also, your intent to use application will show up in trademark searches while your registration is pending so other filers will have notice.

If you are in the process of launching a brand and not quite using the mark in commerce then an intent to use trademark application is a strong option.   If you need help with your trademark application do not hesitate to contact Tinch Law.

J. Greg Tinch

J. Greg Tinch - Founder and Principal of Tinch Law Firm, P.C. - is a patent attorney helping clients realize wealth and legacy in their ideas. Greg has counseled clients from early-stage startups to the federal government on patents, trademarks, copyrights, and transactional and entity formation aspects of business law. Greg's intellectual property practice is informed by his interest in public policy, experience working in Congress and litigating civil cases in Maryland.