The main difference between 1A and 1B trademark applications lies in when you’re actually using your trademark. A 1A application (Section 1(a)) is filed when you’re already using your trademark in commerce, while a 1B application (Section 1(b)) is for when you have a genuine intention to use the trademark but haven’t started yet. This fundamental distinction affects everything from filing requirements to costs and timelines in the US trademark registration process.
What exactly are 1A and 1B trademark applications? #
A 1A trademark application, formally known as Section 1(a), is filed when your trademark is already in use in commerce. This means you’re actively selling products or services under the trademark across state lines or internationally. A 1B application, or Section 1(b), is for trademarks you plan to use but haven’t launched yet – it’s based on your bona fide intention to use the mark in the future.
The US trademark system recognises that businesses often need to secure trademark rights before launching products. That’s why these two filing bases exist within the trademark classification system. The 1A route provides immediate protection for marks already in the marketplace, while the 1B option allows businesses to reserve rights for planned ventures.
Think of it this way: if you’re selling t-shirts with your logo online to customers in different states, you’d file a 1A application. But if you’re developing a new software product that won’t launch for six months, you’d choose the 1B route. Both paths lead to the same destination – a registered trademark – but they take different journeys to get there.
The distinction between these trademark application types is crucial because it determines what evidence you’ll need to provide, how much you’ll pay, and how long the process will take. Neither option is inherently better; it simply depends on your current business situation.
When should you file a 1A versus a 1B trademark application? #
You should file a 1A trademark application when you’re already using your mark in commerce – meaning you’re selling products or providing services under that trademark across state lines or internationally. File a 1B trademark when you have concrete plans to use the mark but haven’t started trading yet. The timing of your business activities is the key factor in making this decision.
For established businesses with active products or services, the 1A route is straightforward. You have real-world evidence of trademark use, customer recognition, and market presence. This makes the application process more predictable since you can demonstrate actual use rather than future intentions.
The 1B option works perfectly for businesses in development phases. Maybe you’re:
- Finalising product development before launch
- Securing funding before market entry
- Building your brand identity before opening
- Testing prototypes before commercial release
Strategic timing matters here. Filing a 1B application too early might mean paying maintenance fees while your product development drags on. Filing too late could mean someone else registers a similar mark first. The sweet spot is typically 6-12 months before your planned launch date.
Consider also that some businesses file multiple applications using different bases. You might file a 1A for your current product line while simultaneously filing a 1B for planned expansions into new trademark classes. This approach protects both your existing business and future growth plans.
What proof do you need for 1A and 1B trademark filings? #
For a use in commerce trademark (1A) filing, you need specimens showing actual use – like product labels, website screenshots, or packaging photos. For an intent to use trademark (1B) filing, you initially only need to declare your bona fide intention to use the mark, but you’ll need to submit use evidence later through a Statement of Use before registration.
The specimens for 1A applications must show your trademark as customers actually encounter it. For goods, acceptable specimens include:
- Product tags or labels attached to the goods
- Product packaging showing the trademark
- Point-of-sale displays featuring the mark
- Website product pages with purchase options
Service mark specimens work differently. Since services are intangible, you’ll need materials that advertise or render the services, such as:
- Business cards or letterheads used in service delivery
- Brochures or flyers advertising your services
- Website screenshots showing service offerings
- Signage at your service location
Common specimen mistakes include submitting mockups, digital renderings, or printer’s proofs instead of real marketplace examples. The trademark office wants to see how consumers actually experience your mark, not how you plan to use it.
For 1B applications, the proof requirements come later. After your application is approved, you have six months (with possible extensions) to file a Statement of Use with proper specimens. This gives you time to launch your product or service and gather real-world evidence of use. The specimen requirements at this stage mirror those of a 1A application – you’ll need to show actual commercial use.
How do costs and timelines differ between 1A and 1B applications? #
Both 1A and 1B applications have the same initial filing fees, but 1B applications incur additional costs for the Statement of Use and possible extension requests. Timeline-wise, 1A applications can proceed straight to registration after approval, while 1B applications require the extra step of proving use, which can add 6-36 months to the process.
The cost structure breaks down into several components. Initial filing fees are identical regardless of your filing basis, covering the examination process and basic administrative costs. However, 1B applicants face additional expenses:
- Statement of Use filing fees for each class
- Extension request fees if you need more time
- Potential legal fees for navigating the use requirements
- Specimen preparation and documentation costs
Timeline differences are even more significant. A smooth 1A application might achieve registration in 8-12 months if there are no office actions or oppositions. The examiner reviews your application, publishes it for opposition, and then registers it if no one objects.
For 1B applications, add at least six months to that timeline. After receiving a Notice of Allowance, you must file your Statement of Use within six months. You can request up to five six-month extensions, potentially stretching the process to three years or more. While this flexibility helps businesses that face unexpected delays, it also means living with uncertainty longer.
Budget considerations should factor in both direct costs and the indirect costs of delayed registration. A 1B application might seem attractive for early-stage businesses, but the extended timeline and additional fees can make it more expensive overall. Consider your cash flow, development timeline, and risk tolerance when choosing between these options.
Can you convert between 1A and 1B trademark applications? #
You can convert a 1B application to 1A during prosecution by filing an Amendment to Allege Use once you start using the trademark in commerce. However, you cannot convert a 1A application to 1B – once you claim use, you can’t take it back. This one-way conversion rule reflects the trademark system’s emphasis on actual commercial use.
Converting from 1B to 1A makes sense when your product launches earlier than expected. Instead of waiting for a Notice of Allowance and then filing a Statement of Use, you can file an Amendment to Allege Use if your application hasn’t been approved for publication yet. This can actually speed up your registration timeline.
The amendment process requires the same specimens and declarations as a regular 1A application. You’ll need to specify:
- The date of first use anywhere
- The date of first use in commerce
- Proper specimens showing trademark use
- A declaration that the mark is in use for all goods/services listed
Strategic considerations for conversion include timing and examination status. If your examiner has already issued an office action, you might want to respond to those issues before attempting conversion. Also consider whether you’re using the mark for all goods and services in your application – you might need to delete some items if they’re not yet in use.
The inability to convert from 1A to 1B serves as a reminder to carefully consider your filing basis from the start. If there’s any doubt about whether your use qualifies as “use in commerce,” it might be safer to file as 1B initially. You can always convert to 1A later, but you can’t go backwards if circumstances change.
Understanding the differences between 1A and 1B trademark applications helps you make informed decisions about protecting your brand. Whether you’re ready to file now with existing use or planning for future launches, choosing the right filing basis sets the foundation for successful trademark registration. If you need guidance navigating these options for international trademark protection, we’re here to help you determine the best strategy for your specific situation. Feel free to contact us to discuss your trademark needs and explore your registration options.
