TMEP 1303.01(a): Filing Basis

October 2017 Edition of the TMEP

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1303.01(a)    Filing Basis

All applications for registration must include a filing basis, regardless of the type of mark, because this is the statutory basis for filing an application for registration of a mark in the United States. TMEP §806. There are five filing bases: (1) use of a mark in commerce under §1(a) of the Act; (2) bona fide intention to use a mark in commerce under §1(b) of the Act; (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act; (4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act; and (5) extension of protection of an international registration to the United States under §66(a) of the Act. 15 U.S.C. §§1051(a)-(b), 1126(d)-(e), 1141f(a); 37 C.F.R. §2.44(a)(4).

An applicant is not required to specify or otherwise satisfy the requirements for a filing basis to receive a filing date. See Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009). If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis. If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.

In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.

See 37 C.F.R. §2.44(a)(4) and TMEP §1301(a)(i)-(v) for a list of the requirements for each basis.