What are the differences between the various bases for filing a trademark application in the USA, such as Actual Use (1a), Intent to Use (1b), Foreign Application (44d), and Foreign Registration (44e)?

USA: Trademark Application Types

In the US, a trademark application can include multiple classes of goods and services, each with its own filing basis. Even within the same class (e.g., Class 25 for clothing), different filing bases can be used (e.g., sweaters under Actual Use and shirts under Intent to Use). Here's a breakdown of each filing basis:

1a (Actual Use) – You must show proof of the mark's use in the US when filing. No further filings are needed unless addressing office actions or oppositions. Proof can be an image of the trademark on the product or an active website selling to US customers.

1b (Intent to Use) – You need to provide proof of use (Statement of Use or SOU) within 6 months after the mark reaches Notice of Allowance (NOA) or is "accepted." NOA is a status for Intent to Use applications, indicating tentative approval pending a proper SOU. If you can't provide proof within 6 months, you can request up to 5 extensions, each for 6 months, by paying additional fees. You must file an SOU within 3 years from the NOA date, or the mark will be abandoned.

44d (Foreign Application) – Within 6 months of filing a foreign application, you can use it as a basis for a US application. You can only claim priority for classes filed in the foreign application. Additional classes must be filed under "Actual Use" or "Intent to Use." Once examined, the US application is suspended until the foreign registration certificate is received. If the foreign registration fails or is delayed, the 44d basis can be replaced with a 1a or 1b basis, requiring US-based use. A 44d/44e approach allows initial registration without US use, but use must be shown for renewals. After filing the foreign registration certificate, the mark is re-examined to ensure class consistency. If they don't match, an office action is issued.

44e (Foreign Registration) – After a foreign trademark is registered, it can be used as a US filing basis (44e). Proof is required at filing, but instead of use, a copy of the foreign registration certificate is needed; printouts from foreign offices are not accepted. A signed translation is required if not in English. You can only claim priority for classes in the foreign registration. Additional classes must be filed under "Actual Use" or "Intent to Use." Processing of a 44e is similar to a 1a basis. A 44e allows initial registration without US use, but use must be shown for renewals. Note: A foreign registration does not guarantee US registration; the mark is still examined and may be rejected due to prior US filings or differences in US trademark laws.