Filing a federal trademark application may vary depending on “basis” to five types including: Actual Use under Section 1(a); Intent to Use under Section 1(b); claiming foreign priority under Section 44(d); claiming foreign registration under Section 44(e); and Madrid Protocol extension under Section 66(a).

Actual Use Basis under Section 1(a) requires proof of use of the mark in the U.S. at the time of filing. No further filing steps should be necessary other than addressing office actions or oppositions. A proof of use can be an image of the trademark on the product, or an active website showing sale to U.S. customers.

Intent to Use under Section 1(b) applies when the trademark is not being used in commerce in the United States and proof of use will have to be presented at an additional fee to finalize the registration process. You must provide proof of use (Statement of Use) of the mark in the US within 6 months after the date the mark reaches Notice of Allowance (NOA).  The NOA is a status reserved for Intent to Use applications. If you cannot provide proof of use within that 6-month period, you may request a 6-month extension by paying additional fees. You can request the extension up to 5 times.

A trademark application claiming foreign priority under Section 44(d) applies within 6 months from the filing date of a foreign trademark application. Once the U.S. application has been examined, it is suspended pending receipt of the foreign registration certificate.  If the foreign registration fails (or is going to take years to process), the 44(d) basis can be substituted with Section 1(a) or 1(b) basis.

Claiming foreign registration under Section 44(e) applies when a foreign trademark was registered at the time of the U.S. filing. Instead of proving a proof of use in commerce, a copy of the actual foreign registration certificate can be submitted.

Section 66(a) of the Trademark Act provides a basis for filing in the United States.  See 37 C.F.R. §2.34(a)(5).  A basis under §66(a) cannot be combined with any other basis.  37 C.F.R. §2.34(b)(3).  A §66(a) applicant may not change the basis unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c).  37 C.F.R. §2.35(a).  See TMEP §1904.09 regarding transformation.

Section 66(a) via Madrid Protocol requires transmission of a request for extension of protection by the International Burau to the USPTO and cannot be added or substituted as a basis in an application originally filed under §1 or §44.