Trademark Statement of Use

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Trademark Statement of Use

A trademark statement of use (SOU) is required for any trademark filed with the United States Patent and Trademark Office (USPTO) on an intent to use basis.  Thus, actual use of your trademark is not required to begin to receive trademark protection.  However, it is necessary that you have a bona fide intent to use your trademark in commerce.  This generally means that there must be some written plans.

What is a Trademark Statement of Use?

The USPTO is tasked with providing protections for trademark owners. By submitting a trademark application, you’re beginning the process of protecting your brand’s reputation and ensuring no one else profits from your hard work and ingenuity.

There are two ways that someone can qualify for trademark registration. They are as follows:

  • Actual Use: This requirement is met when an applicant can prove that they’re currently using a desired trademark in commerce. The trademark can be displayed on the goods themselves, packaging or product documents. Advertising materials can be used when seeking service marks.
  • Intent to Use: If you have a trademark in mind but have not yet used it in commerce, you’ll need to file an Intent to Use application. This will start the normal trademark registration process, but you won’t be granted registration until actual use is proven.

A trademark Statement of Use becomes necessary when your application was based on an intent to use. Your application will be reviewed by an examining attorney and, if there are no issues with your requested trademark, it will be published in the Official Gazette. This begins the 30-day period where others can file a trademark opposition. If no one opposes the registration or requests an extension, you’ll receive a Notice of Allowance typically within eight weeks of publication.

The Notice of Allowance acts as a six-month warning to use your trademark in commerce. Within that period, you’ll need to submit either a Statement of Use or request for extension. If approved, your extension will grant you six additional months to file the SOU. Just as is the case for those who submit applications based on actual use, you’ll need to include evidence of commercial usage in the form of a specimen of use.

If your trademark Statement of Use is approved by a USPTO examining attorney, your trademark will usually register within two months.

How to File Trademark Statement of Use

Submitting evidence of use can take place almost any time during the trademark application process. If you establish evidence of actual use before the examining attorney approves publication, you’ll need to file an Amendment to Allege Use. Once it’s published, however, a blackout period occurs. Only after the Notice of Allowance has been issued can you then submit evidentiary specimens in the form of a statement of use.

To file a Statement of Use once the Notice of Allowance has been issued, you’ll need to visit the Trademark Electronic Application System (TEAS) here. You’ll need your registration serial number to access the digital document. When filing, the appropriate fees must be submitted and you’ll have to include the following information:

  • The date in which trademark was first commercially used in each trademark class.
  • At least one specimen showing actual use for a product or service in each class.
  • A signed declaration affirming actual use or deleting goods and services that haven’t been used.

When submitting a Statement of Use, you may also include a request to divide. This would separate the products or services within your initial application so that registration could be granted for certain items but not others. This is ideal if you want to quickly garner federal trademark benefits but haven’t established actual use for all goods and services contained in your original application.

There must be sufficient use in commerce to file a statement of use. Token or trivial use undertaken to speed up the process will not qualify. There are no guidelines for what qualifies as sufficient in every situation, so it’s important to have satisfactory evidence that legitimate use has occurred in the event of a dispute.

Trademark Statement of Use Example

The Statement of Use online form includes sections where you can modify information, delete and divide goods and services, attach relevant specimens and sign the necessary declaration affirming actual use.

Prior to filing you should review the entire form to be sure that you have the answers ready when filing.  This will help ensure that you have everything ready prior to beginning the online form. This is important since there is a time limit once you begin imputing information.

Trademark Statement of Use Extension

Filing an Intent to Use application carries several benefits. One of the most important is that, if your trademark infringes upon a federally registered trademark, you may be able to figure this out during the opposition period without spending the money to commit to actual use. If you’re simply not ready to utilize your trademark in commerce, however, a trademark Statement of Use extension can provide valuable time to meet all requirements.

While multiple trademark Statement of Use extensions can be filed, the USPTO only allows this to be done a total of five times. This means you’ll have up to three years following receipt of your Notice of Allowance to engage in sufficient commerce and submit the appropriate forms. An Extension of Time request must include the following:

  • A written request for extension (can be completed online).
  • The filing fee for each class of goods or services with requested extension.
  • A verified statement that there has been a continued intent to use.
  • After the first request, good cause must exist.

After an extension request has been submitted, the USPTO will issue either a grant or denial of the request. Keep in mind that your six-month period may expire prior to receiving this notification. This doesn’t negate the responsibility of filing in a timely manner. A denial will list the reason your extension wasn’t granted, so if the six months has not expired, you can file a substitute request to correct the initial defects.

If a statement of use or request for extension is not filed in a timely manner, the trademark application will abandon.

Trademark Statement of Use Sample Specimen

The trademark Statement of Use example specimen you submit will dictate whether your registration is finalized. If it is not sufficient, you’ll be required to send new specimens within the allotted time period. If this time has expired, your trademark application will abandon.

Trademark statement of use example specimens vary dependent on whether the trademark is for a good or service and the type of goods offered. Before delving into these examples, familiarize yourself with the requirements of an acceptable specimen:

  • The trademark must be shown in use on the goods or services.
  • The trademark must be the same as depicted in your application’s drawing.
  • Use in commerce must be shown (no “proof of future use” or mockups).
  • It must show that you are using the trademark – not someone else (e.g. media).
  • The specimen type must be appropriate dependent upon goods or services.
  • The specimen must show the trademark used in a way that would result in consumers viewing it as a source indicator.

Specimens that fail to meet each of these requirements will not be accepted as proof of actual use. It’s important to note that evidence of use that’s acceptable for services likely will not be appropriate for goods. Because of this, consider the following example specimens before deciding on what to submit:

Specimen Examples for Goods

  • The Actual Goods: Photos showcasing the trademark on the front of a bottle.
  • Affixed Labels and Hang Tags: Photos of the trademark on a label or hang tag on apparel.
  • Packaging: Photos of a logo stamped on the front of a box of mugs.
  • Placards and Sales Displays: Photograph of a point of sale display for food or drinks.
  • Webpage Selling Product: Screenshot of a webpage that shows item for sale, pricing and shopping cart.

Specimen Examples for Services

  • Website: Screenshot of a website offering the services.
  • Advertisement: A screenshot or flyer showing advertising of the services.
  • Brochure: Photograph of a brochure offering the services.
  • Onsite Signage: Photograph of business sign outside the business.

Statement of Use Trademark Fee

The typical government filing fee for a trademark application is $225 per class. This cost is contingent upon whether you meet certain requirements that reduce your fee. When submitting specimens, your Statement of Use trademark fee will be $100 per class if performed digitally. Mailing in your SOU increases this to $200.

This fee is mandatory regardless of when you file your Statement of Use. If you file for extensions, you’ll face additional costs. Each extension is $125 per class. If you request each of the allowable five extensions, you’ll pay $625 for a single trademark class. While there’s a good chance your initial extension request will be granted, keep in mind that you must show good cause when seeking subsequent postponements.

You will not get your fee back if one of these requests is denied. This means it’s essential to have a strong understanding of the rules or have a trademark attorney handle the filing for you.

Contact Us

If you have a legal issue with a statement of use, please feel free to contact us today.

 

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