Understanding U.S. Trademark Filing Bases: Which One Is Right for You?

When filing a U.S. trademark application, one of the first decisions you’ll need to make is selecting the correct filing basis.

If you’ve filed trademarks in other countries before, this concept may seem unfamiliar. Unlike many jurisdictions, such as Canada, the United Kingdom, the European Union, Australia, and most other countries, the United States generally requires applicants to identify the legal basis on which they are seeking registration.

In most countries, you simply file a trademark application. In the United States, you must also explain why you are entitled to file it. This legal foundation is called the filing basis.

The filing basis tells the United States Patent and Trademark Office (USPTO) why you are entitled to apply for the trademark and determines what additional requirements, if any, must be satisfied before your trademark can be registered.

Fortunately, once you understand the available filing bases, choosing the right one is usually straightforward.

What is a filing basis?

A filing basis is the legal ground on which your U.S. trademark application is filed. It reflects your current circumstances and determines what evidence or additional steps may be required before registration.

Most applicants qualify under one of four filing bases:

• Section 1(a) – Actual Use
• Section 1(b) – Intent to Use
• Section 44(d) – Foreign Application
• Section 44(e) – Foreign Registration

Let’s look at each option.

Filing based on current use (Section 1(a))

Businesses already selling products or providing services in U.S. interstate commerce generally file under the Actual Use basis.

Applicants must provide:

• the date the trademark was first used anywhere;
• the date it was first used in U.S. interstate commerce; and
• a specimen showing how the trademark is used with the goods or services.

Because the trademark is already in use, no further proof of use is required before registration.

Filing before launching your business (Section 1(b))

Many businesses want to secure their trademark before entering the U.S. market.

The Intent to Use filing basis allows applicants to file before commercial use begins, provided they have a genuine intention to use the trademark.

The USPTO will examine the application in the normal course. However, before registration can be issued, the applicant must:

• begin using the trademark in U.S. interstate commerce;
• file a Statement of Use with an acceptable specimen (proof of use); and
• pay the applicable USPTO government fees.

This is one of the most common filing bases for startups and foreign businesses planning to expand into the United States.

Claiming priority from a foreign application (Section 44(d))

If you filed a trademark application in another country within the previous six months, you may be able to claim that earlier filing date as your U.S. priority date.

This can be extremely valuable if someone else files a confusingly similar trademark after your foreign filing but before your U.S. application.

It is important to understand that Section 44(d) is a valid filing basis, but it cannot, by itself, support registration.

Before your U.S. trademark can be registered, the application must either:

• Be amended to Section 44(e) once your foreign trademark registration issues; or
• Proceed under Section 1(b) after you begin using the trademark in U.S. interstate commerce and file a Statement of Use.

For this reason, we generally recommend that eligible foreign applicants file under both Section 44(d) and Section 1(b). This preserves maximum flexibility while the application is pending and allows you to choose the most advantageous path to registration later.

Registering based on a foreign registration (Section 44(e))

Once your trademark has been registered in your country of origin, you may become eligible to rely on Section 44(e).

Unlike an Intent-to-Use application, a Section 44(e) application does not require you to file a Statement of Use or submit proof of U.S. use before registration.

Instead, your foreign registration serves as the legal basis for obtaining a U.S. trademark registration.

This can reduce both the time and the cost of obtaining a U.S. registration.

Keep in mind, however, that after registration, you must still make genuine use of the trademark in U.S. commerce in order to maintain your registration.

What’s the difference between Sections 44(d) and 44(e)?

Although both filing bases are available to many foreign applicants, they serve different purposes.

Section 44(d) is based on a pending foreign trademark application. It allows you to claim the filing date of your earlier foreign application as your U.S. priority date, provided the U.S. application is filed within six months. However, a Section 44(d) filing alone cannot mature into a registration.

Section 44(e) is based on an issued foreign trademark registration. Once your trademark has been registered in your country of origin, you may amend your U.S. application to rely on Section 44(e), allowing your trademark to proceed to registration without filing a Statement of Use.

In simple terms:

• Section 44(d) applies when your foreign trademark application is still pending.
• Section 44(e) applies after your foreign trademark has been registered.

Many foreign applicants initially file under Section 44(d) (often together with Section 1(b)) and later amend the application to Section 44(e) once their foreign registration is issued.

Why combining filing bases can be beneficial

Many foreign applicants are surprised to learn that a U.S. application may include more than one filing basis.

For example, an applicant who has recently filed abroad can often file under both Section 44(d) and Section 1(b).

This provides two possible routes to registration:

• If the foreign registration issues first, the applicant can amend the filing basis to Section 44(e) and obtain registration without filing a Statement of Use.
• If the foreign registration is delayed, the application can continue under Section 1(b) once the trademark is used in U.S. interstate commerce.

This flexibility is a significant advantage available to many foreign applicants.

Which filing basis is right for you?

The answer depends on several factors, including whether you are already using your trademark in the United States, whether you have filed or registered your trademark in another country, and your business plans.

Choosing the correct filing basis from the outset can simplify the registration process and preserve valuable options later.

At Trademark Angel, we review every client’s circumstances before filing and recommend the filing strategy best suited to their situation. Where appropriate, we also combine filing bases to maximize flexibility and help clients obtain the strongest possible protection.