filing basis needed - how?

[infocus]

What is the name of your state? CA.

My trademark was approved but I received an email that I need to submit a filing basis. The deadline to respond is approaching and I have no idea how to do it.

Can someone lend a fellow human a helping hand? Precise steps would be very, very much appreciated. Thank you!!

 

[divgradcurl]

The legal basis for filing an application for registration of a mark. The Trademark Act sets out five filing bases, and an applicant must specify and meet the requirements of one or more bases before the mark will be approved for publication for opposition or registration on the Supplemental Register. The five bases are: (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) registration of a 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 and the Madrid Protocol. The requirements for the bases are set forth in Trademark Rule 2.34.

-- seeTMEP §806.

If no basis is set forth in the original application for registration, the examining attorney will issue an Office action requiring the applicant to specify a basis and meet all requirements for the basis. In applications under §§1 and 44, the applicant may claim more than one basis, and/or may add or substitute a basis after filing the application.

Here is a link to TMEP 806 et seq: http://tess2.uspto.gov/tmdb/tmep/0800.htm#_T806

Usual basis is (1), use of the mark in commerce. TMEP 806.01(a) tells you exactly what you need to submit.

 

[quincy]

Your filing basis would be either your Use in Commerce (for goods or for services) or your Intent to Use or, less commonly, International Agreements. There are approximately 40 different classifications for goods and services and you should review them all to see which classification is appropriate for your mark.

If your filing basis is for "goods used in commerce", the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce (interstate or between the U.S. and another country). This filing basis must be for the actual use of the mark and not just to reserve the rights in the mark for this use. You must file a sworn statement that your mark has been used for goods in commerce, and you must include the date of the first use of your mark.

If your filing basis is for "services used in commerce", the mark must be used or displayed in the sale or advertising of the service, and the services must be related to commerce. Again, a sworn statement of actual use must be provided stating the first date of use.

If your filing basis is for "Intent to Use", you have not already used the mark and your filing is based on your good faith intention to use the mark in commerce. You do not have to use the mark prior to filing your application, but you must begin actual use of the mark in commerce before the USPTO will register the mark. Again, a sworn statement must be provided stating that you have an actual intention on using the mark in commerce.

The USPTO has a form showing a standard declaration, properly worded, for your sworn statement. Use this.

You will need, if you have not already provided this with your application, a "specimen of use" which is an actual example of how your mark is used (not just a drawing). This specimen can be a photograph of your product with the label or tag, the tag itself, the label itself, etc. It should not, however, be the actual product that is sent or submitted. If you filed electronically, your specimen should be shown in .jpg format. Paper applications should have an 8 1/2 x 11 inch or less specimen.

The easiest way to file an application and make sure you have all that is necessary to register your mark is to go to the USPTO website and follow the directions there. The web address is www.uspto.gov.

DIVGRADCURL!!!!! Where the heck have you been???

 

[The Occultist]

DIV!! You're BACK! You can finally start correcting us amateurs!!

 

[infocus]

Wow, you guys are amazing, thank you for the quick response. I have read TMEP 806.01a, but it is not clear where/how to append to my original filing with the required filing basis materials.

Also:

"The USPTO has a form showing the standard declaration.". Where can I find this?

Thank you for the additional clarification!

 

[quincy]

Sorry, infocus. I didn't see your additional questions.

You should go to the USPTO site (www.uspto.gov) and click on the USPTO Site Index. Then start scrolling.

Declaration Forms can be found by clicking on Forms, USPTO. You can also click on FAQ, Trademarks (among other categories), for further information.

 

[fairisfair]

Sorry, infocus. I didn't see your additional questions.

You should go to the USPTO site (www.uspto.gov) and click on the USPTO Site Index. Then start scrolling.

Declaration Forms can be found by clicking on Forms, USPTO. You can also click on FAQ, Trademarks (among other categories), for further information.

wow Quince, you really are a fellow human.

 

[quincy]

I can be. . . . on occasion.