What is a Trademark Statement of use?

A Statement of Use (SOU) is one of the official forms used by the United States Patent and Trademark Office. It can only be filed once a business has started to use a trademark. This means you can't register a trademark just to tie it up; you need to use it in commerce. Ways to prove a trademark's use include displaying it on products, packaging, or other marketing tools.

If you filed your trademark on the basis of intent to use, you must file a Statement of Use to show you are using it to sell goods and/or services. If you aren't ready to file the SOU, you need to file a Request for Extension of Time to File a Statement of Use within six months of when your Notice of Allowance was issued. The extensions can be filed every six months for up to 36 months.

Why is a Trademark Statement of Use Important?

Without filing the Statement of Use, your trademark application cannot be finalized and approved. The U.S. Patent and Trademark Office won't publish trademarks in the official gazette unless they're actively used. This helps lessen confusion that might exist if multiple trademarks get registered but never used. If you aren't ready to start using the trademark in your commerce stream, then you shouldn't file the Statement of Use, as there is the requirement that you show proof the trademark is, in fact, already in use.

This follows the Notice of Allowance and specimen sample, wherein a 30 day opposition period starts. During this timeframe, the public has the opportunity to claim that a trademark that's intended for use is infringing on someone else's trademark, or the design is too similar to existing trademarks already actively in use in commerce.

Frequently Asked Questions

  • What is a Statement of Use?

A proper Statement of Use Form is filed with the United States Patent & Trademark Office to maintain a live status of your trademark. This helps avoid abandonment and someone else snatching it.

  • What is a specimen?

If you're selling goods, a specimen is a photographic example of your trademark on the products you're selling. Showing a photo only of a decorative element does not count. Standards allow for the small logo to be placed at the left breast of a shirt as it's deemed to create the commercial impression.

If you sell services, you'll want to upload a photo showing the trademark as it's used in advertising your services. Maybe use your business sign, a brochure about the business, website screenshot, or business card and/or stationary. The important element of the specimen is that it shows reference to the services provided, not just an example of the trademark itself.

  • What is the government fee for filing a Statement of Use?

The fees went up January 14, 2017, and now there is a $200 filing fee for a Statement of Use form.

  • When do I file a Statement of Use?

The Statement of Use is filed within six months after the issue date of your Notice of Allowance, and a Statement of Use is filed between the 5th to 6th year subsequent to the registration date.

Steps to File

File the Statement of Use through TEAS, where it's filed electronically and displays a "success" page so you know it went through. If any questions arise about the filing date, this is the best way to show what day it was received. TEAS also sends out a separate email receipt, which can be transferred or printed for any records needed. Payment is made by credit card, deposit account, or EFT.

You may also call the Trademark Assistance Center (571) 272-9250 or (800) 786-9199 to get a pre-printed paper form ("Trademark/Service Mark Allegation of Use"). Mail, fax, or deliver by hand to the USPTO. If you fax it, you must include a credit card authorization form.

The address to hand deliver it, or send it by courier, is Trademark Assistance Center ("TAC") James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia. The office is open Monday through Friday from 8:30am to 5:30pm EST, except on federal holidays within the District of Columbia.

If you don't use the electronic filing or pre-printed form, your statement needs captioning as a "Statement of Use." 37 C.F.R. §2.88(b)(6). Please note it's not entirely mandatory and the USPTO will accept the filing, provided it follows the standards in 37 C.F.R. §2.88(c), whether or not it has the proper title.

When you are completing your Statement of Use, look for the serial number associated with your trademark application and the class numbers you originally claimed. Remember to upload a specimen, or example, of your trademark in use. When it comes to class specifications, remember that if you claim multiple classes, you must have already used the trademark in each. If you have used it in one, but plan to in another, preserve your right by selecting "Request to Divide." If you divide a trademark, you should ask for an extension.

It's imperative that you familiarize yourself and follow 37 C.F.R. §2.88 (updated as of January 26, 2017). Once a Statement of Use is filed, it cannot be withdrawn for any reason so it's critical you've met all the requirements. 37 C.F.R §2.88 reads,

§2.88 Statement of use after notice of allowance.

(a) When to file a statement of use.

(1) In an application under section 1(b) of the Act, a statement of use, required under section 1(d) of the Act, must be filed within six months after issuance of a notice of allowance under section 13(b)(2) of the Act, or within an extension of time granted under §2.89. A statement of use filed before issuance of a notice of allowance is premature and will not be reviewed.

(2)

(i) For a trademark, service mark, collective trademark, collective service mark, and certification mark, a statement of use may be filed only when the mark has been in use in commerce on or in connection with all the goods or services specified in the notice of allowance for which the applicant will seek registration in that application. For a collective membership mark, a statement of use may be filed only when the mark has been in use in commerce to indicate membership in the collective membership organization specified in the notice of allowance for which the applicant will seek registration in that application.

(ii) A statement of use may be accompanied by a request in accordance with §2.87 to divide out from the application the goods, services, or classes not yet in use in commerce.

(b) A complete statement of use. A complete statement of use must include the following:

(1) A verified statement alleging:

(i) The applicant believes the applicant is the owner of the mark;

(ii) The mark is in use in commerce;

(iii) The date of first use of the mark anywhere on or in connection with the goods, services, and/or to indicate membership in the collective organization specified in the application, and the date of first use of the mark in commerce. If the statement of use specifies more than one item of goods or services in a class, the dates of use are required for only one item of goods or services specified in that class;

(iv) The goods, services, and/or nature of the collective membership organization specified in the notice of allowance. The goods or services specified in a statement of use must conform to those goods or services specified in the notice of allowance for trademark, service mark, collective trademark, collective service mark, or certification mark applications. Any goods or services specified in the notice of allowance that are omitted from the identification of goods or services in the statement of use will be presumed to be deleted and the deleted goods or services may not be reinserted in the application. For collective membership mark applications, the description of the nature of the collective membership organization in the statement of use must conform to that specified in the notice of allowance; and

(v) For a collective mark and certification mark, the applicant is exercising legitimate control over the use in commerce of the mark;

(2) One specimen showing how the applicant, member, or authorized user uses the mark in commerce. See §2.56 for the requirements for specimens;

(3) Fee(s). The fee required by §2.6 per class. The applicant must pay a filing fee sufficient to cover at least one class within the statutory time for filing the statement of use, or the application will be abandoned. If the applicant submits a fee insufficient to cover all the classes in a multiple-class application, the applicant should specify the classes to be abandoned. If the applicant timely submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to be abandoned, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining class(es) or to specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid, beginning with the lowest numbered class, in ascending order. The Office will delete the class(es) not covered by the fees submitted;

(4) For a collective mark, the requirements of §2.44(a)(4)(i)(A);

(5) For a certification mark, the requirements of §2.45(a)(4)(i)(A) through (C); and

(6) The title "Statement of Use" should appear at the top of the first page of the document, if not filed through TEAS.

(c) Minimum filing requirements for a timely filed statement of use. The Office will review a timely filed statement of use to determine whether it meets the following minimum requirements:

(1) The fee required by §2.6 for at least one class;

(2) One specimen of the mark as used in commerce; and

(3) The verified statement in paragraph (b)(1)(ii) of this section. If this verified statement is unsigned or signed by the wrong party, the applicant must submit a substitute verified statement on or before the statutory deadline for filing the statement of use.

(d) Deficiency notification. If the statement of use is filed within the permitted time period but does not meet the minimum requirements specified in paragraph (c) of this section, the Office will notify the applicant of the deficiency. If the time permitted for the applicant to file a statement of use has not expired, the applicant may correct the deficiency.

(e) Notification of refusals and requirements. A timely filed statement of use that meets the minimum requirements specified in paragraph (c) of this section will be examined in accordance with §§2.61 through 2.69. If, as a result of the examination of the statement of use, the applicant is found not entitled to registration, the applicant will be notified and advised of the reasons and of any formal requirements or refusals. The statement of use may be amended in accordance with §§2.59 and 2.71 through 2.75.

(f) Statement of use may not be withdrawn. The applicant may not withdraw a timely filed statement of use to return to the previous status of awaiting submission of a statement of use, regardless of whether it is in compliance with paragraph (c) of this section.

(g) Verification not filed within reasonable time. If the verified statements in paragraphs (b)(1)(ii) and, if applicable, (b)(1)(v) of this section are not filed within a reasonable time after they are signed, the Office may require the applicant to submit substitute verified statements attesting that the mark is in use in commerce, and, if applicable, the applicant is exercising legitimate control over the use of the mark in commerce.

(h) Amending the application. The statement of use may include amendments in accordance with §§2.51, 2.59, and 2.71 through 2.75.

(i) Concurrent use. If the application is amended to concurrent use under §2.73, the statement of use must include a verified statement modified in accordance with §2.33(f), §2.44(d), or §2.45(d).

(j) Multiple-class application. For the requirements of a multiple-class application, see §2.86.

(k) Abandonment. The failure to timely file a statement of use which meets the minimum requirements specified in paragraph (c) of this section shall result in the abandonment of the application.

[80 FR 33185, June 11, 2015]

Once you submit all your documentation and specimen, an examining attorney reviews the documentation and issue a Certificate of Registration if they find the public is not likely to confuse the symbol with existing trademarks and this new filing is for business use. In the event the application is rejected, the examining attorney must give the reasons why. You then have six months to correct the issue(s) and resubmit.

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