Registering your trademark is a critical step in protecting the Intellectual Property rights of a business, whether it is a startup or a well-established business. Therefore, it is imperative that information provided in a trademark application be accurate, truthful, and precise as to the dates of use of the mark. While it may be attractive to provide some details to make the application eligible for a specific type of trademark application, doing so may have severe consequences.
This article will: (1) provide a quick overview of the different types of trademark applications, and (2) focus on why applicants should not provide false dates regarding the use of their goods or services in commerce.
Types of Trademark Applications
There are five types of trademark applications that are enumerated below:
- “Use-in Commerce” basis (Trademark Act Section 1(a)) – the trademark is already used in the US territory;
- “Intent-to-Use” basis (Trademark Act Section 1(b)) – the applicant has a bona fide or “good faith” intent to use the mark in the US territory in the near future;
- Foreign registration basis (Trademark Act Section 44(e)) – the same trademark is already registered in a foreign country for the same goods and services; and
- Foreign application basis (Trademark Section 44(d)) – an earlier filed application for the same trademark that covers the same goods and services which was filed in a foreign country within the last six months.
- International Registration basis (Trademark Section 66(a)) – request for extension of an international registration in the US through Madrid protocol.
For purposes of our discussion, this article will focus on Section 1(a) and 1(b) applications.
The primary difference between a Section 1(a) and a Section 1(b) trademark application lies in the stage of use of the mark in commerce within the US territory. For Section 1(a) applications, the proof of actual use of the mark in commerce, in connection with the goods or services, requires submission of a “specimen” – a sample or example (photograph or screenshot) of how trademark is actually used in the marketplace – with the application.
For Section 1(b) applications, there is no requirement of a “specimen” during examination of the trademark application. In most cases, the trademark is not yet used in commerce and so there is no proof of use to show for. Sometimes there may be use in commerce but perhaps the “specimens” do not conform to the rules accepted by the USPTO (United States Patent and Trademark Office); so, an applicant can convert a Section 1(a) application into a Section 1(b) application. Regardless, the applicant must have a bona fide/good faith intention to use the mark in commerce in the near future. While a Section 1(b) application allows the applicant to secure a filing date and establish priority simply by filing the application, the applicant must later provide evidence of actual use of the mark in commerce via a declaration and submittal of a specimen. This is known as filing a Statement of Use. The Statement of Use must be submitted within six months of getting a Notice of Allowance, but applicants can obtain 6-month extension, up to five times in total, for submission of the Statement of Use. The USPTO requires additional fees for filing the Statement of Use in Section 1(b) applications, whereas in Section 1(a) applications, it only requires a single filing fee.
A Section 1(b) trademark application is useful for a business that would like to establish a priority date for a mark in connection with a new product(s) or service(s) that the business has developed or is in the process of developing and has not yet launched. It is a perfect way to protect its Intellectual Property rights in advance of launch.
Ramifications of False Information
Because of the overall costs of filing a Section 1(b) application versus filing a Section 1(a) application, sometimes applicants may be tempted to provide falsified evidence of use in commerce and file a Section 1(a). Applicants may also be tempted to provide an earlier date of use in commerce to establish earlier priority. But providing false information in a trademark application can lead to serious consequences sometimes years after the trademark has been registered. Trademark applications are subject to examination, and if the applicant is found to have provided false information, the registration may be denied or even canceled after issuance. In addition, the USPTO has implemented a “post registration audit program” to ensure the accuracy of registered trademarks. This is a mechanism to randomly audit registered marks and cancel those with major inaccuracies. Intentionally falsifying information may also result in legal action for fraud or misrepresentation.
Further, providing false information in a trademark application can complicate the enforcement of trademark rights. Trademark rights protect its holder against infringers only when there is actual use of the mark in commerce. Additionally, if the registration of the mark is based on false information, it may hinder the holder’s ability to enforce its trademark rights effectively and provide grounds for other parties to seek cancellation of the mark. Valid and accurate information strengthens the applicant’s position in potential legal disputes and ensures the protection of their Intellectual Property rights.
In sum, applicants should avoid falsifying information in a trademark application at all costs. The potential consequences range from cancellation of the trademark and enforcement challenges to legal trouble. Upholding honesty and integrity throughout the trademark registration process not only safeguards an applicant’s interests, but also contributes to a fair and transparent marketplace. It is crucial to recognize the importance of providing accurate and truthful information when seeking trademark protection, respecting the principles of Intellectual Property laws, and maintaining ethical business practices.
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