Trademark

Filing basis-statement of use in US (NOA)

When filing a trademark application, some countries require applicant to file so-called trademark basis of use or statement of use. Here, we take the example of the US statement of use of trademark to illustrate some points to note in a US trademark application.

The filing basis for US trademark applications are as follows:

  1. Use in commerce
  2. Intend to use
  3. Foreign application / Foreign registration
  4. Requirement for Request for Extension of Protection of an international registration

Among which, the trademark statement of use is a requisite statement of the filing basis of “intend to use”. The applicant has to submit a “statement that his trademark has been used in the United States” within six months after receiving the notice of approval. The statement must include (1) that his trademark has been used in trade or business; (2) the date of the initial use of the trademark in any context; (3) the actual use sample of each item of the goods or services applying for protection.

The advantage of the filing basis of “intend to use” is that the applicant can file the application as early as possible and can submit the trademark statement of use after the approval. If the applicant is unable to submit the statement, he may then amend the filing basis.

In practice, this method is indeed to a large extent beneficial to the applicants, especially to those who have already planned to apply in the United States. However, if you have already applied for registration in another country and wish to expand your business to the United States, we suggest you using the “Foreign application / Foreign registration” as the filing basis. For you have already obtained the application / registration number in another country, avoiding the need to put forth another statement of use upon approval of the application on that basis, and getting an automatic announcement and approval for collection of certificate after the examination committee confirms that the trademark can be approved.

The filing basis is a cardinal aspect of the US application of trademark registration. Each of the bases has advantages and disadvantages. However, the practical operation depends entirely on the situation when the applicant wishes to apply for a trademark registration in the United States. At that time, we suggest you engaging a professional agency to evaluate which basis you should opt for to clarify the requisite conditions, saving official fares and shortening the examination duration. It can be said to have killed two birds with one stone!

If you happen to need to file a US trademark application, but do not know which basis to use, or what a statement of use is, I hope the above explanation assists you. Should you have any need, please contact us for further professional advice, so that you can go through the US trademark application, and registration smoothly!

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