What is a Statement of Use?
If you want to register a trademark with the USPTO, you have to be able to prove that you are already using the trademark to sell your products or services and that your aim is not only to register the trademark to prevent others from being able to use it.
This article explains “In Use” and “Intent to Use” Trademark Applications and the Statement of Use Requirement.
The In-Use Trademark Application Process
The U.S. Patent and Trademark Office (USPTO) offers two options for trademark owners to secure federal trademark protection for their marks. You may apply for trademark registration if your mark is already in use at the time the trademark application is filed. This is an In-Use application. Or, in the alternative, if you are not yet using your trademark but would like to secure the trademark name early, you can submit an Intent to Use trademark application.
The Intent To Use Trademark Application Process
An Intent to Use trademark (ITU) initially proceeds much like an In-Use application once filed at the USPTO.
Approximately 4 months after the application is filed, it is assigned to an Examiner at the USPTO who reviews the application for errors, conflicts or other issues that may bar registration.
If the application passes the Examiner’s review, the Examiner will approve the mark for publication.
If there is no third-party opposition to your trademark during the publication period, the Examiner assigned to your trademark application will issue a Notice of Allowance (NOA).
This is a provisional approval of your mark, but you must show use of the mark in commerce before the USPTO will permit full registration of your trademark.
Statement of Use Filing Process
You have 6 months from the date of the Notice of Allowance to either:
1. Show use of the mark in commerce by filing a Statement of Use (SOU) with appropriate specimen;
2. File a request for extension of time to file the Statement of Use.
If granted, the extension will provide another 6-month period to show use. A total of 5 extension requests may be filed.
Subsequent requests for extension must be filed before the expiration of a previously granted extension.
The Statement of Use applies to all the goods and/or services listed in your trademark application. Intent to Use trademark applications give you the advantage of an early filing date, which is very important for trademark priority purposes.
ITU trademark applications incur an additional $100 USPTO filing fee per class of goods and/or services, plus applicable legal fees when the Statement of Use is filed. To request an Extension of Time, the USPTO filing fee is $150.
If you are already using your trademark when your trademark application is filed, your application will be filed as an “In Use” mark and the Statement of Use requirements will not apply to your mark.
Our Attorneys Can Prepare Your Statement of Use
Failure to file a timely Statement of Use, or filing an insufficient SOU, could result in abandonment of your Intent to Use trademark application.
The trademark attorneys at Flat Fee Trademark assist hundreds of clients every year with Statement of Use filings.
Our attorneys can assist you in preparing the Statement of Use and ensuring your specimens meet the specific requirements set forth by the USPTO.
Contact us today for a complimentary consultation regarding your Statement of Use with one of our experienced trademark attorneys, (800) 769-7790, or submit your inquiry using the Contact Form.