Key Takeaways

  • A Statement of Use (SOU) is required to convert an “intent-to-use” trademark application into a registered trademark with the USPTO.
  • The SOU must include a verified statement, specimen of use, and payment per class of goods/services.
  • If not yet using the mark in commerce, applicants can request six-month extensions—up to five times (36 months total).
  • Premature or deficient filings can result in abandonment; careful compliance with USPTO rules is crucial.
  • Dividing an application is an option if the trademark is used in some, but not all, classes listed.
  • Filing is easiest and cheapest via the USPTO's TEAS system.

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.

When Is a Statement of Use Required?

A Statement of Use is only necessary if a trademark application was filed based on “intent to use” under Section 1(b) of the Lanham Act. It is not required for applications based on current use in commerce. After the USPTO issues a Notice of Allowance, applicants have six months to file the SOU. If additional time is needed, they must request an extension before the deadline expires. Filing the SOU confirms that the mark is actively used in commerce with the goods/services listed in the application.

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 the 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.

What Happens If You Don’t File the SOU?

Failing to file a Statement of Use—or a valid extension request—within the allowed timeframe will result in the abandonment of the application. Once abandoned, the USPTO will no longer consider the application active, and the applicant forfeits priority rights associated with the original filing date. To prevent this, it’s essential to track all deadlines carefully and file any necessary extensions promptly.

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.

Tips for a Successful Statement of Use Filing

To increase your chances of a smooth filing and approval process:

  • Submit only appropriate specimens: The specimen must clearly demonstrate the trademark in actual commercial use. For goods, this may include product labels, packaging, or tags. For services, it may include website screenshots, advertisements, or brochures.
  • Avoid ornamental use: A logo on a t-shirt that appears purely decorative (e.g., large across the chest) may not qualify unless it also appears in a “source-identifying” way, like on the collar tag or packaging.
  • File electronically via TEAS: Filing online not only lowers fees but also provides immediate confirmation and tracking.
  • Monitor your deadlines: Use reminders or a docketing system to ensure no extension deadlines are missed.
  • Be accurate and complete: All information in the SOU must match the Notice of Allowance. Incorrect class numbers or vague usage dates can delay registration or cause rejection.

If there is any uncertainty about your eligibility or specimen, consulting an attorney before filing can help avoid costly mistakes.

What If You’re Not Using the Mark for All Goods or Services?

If your application includes multiple classes or a broad list of goods/services, but the trademark is only in use for some of them, you can file a "Request to Divide" the application. This allows you to move forward with the portion in use while preserving the rest with a time extension. However, you must pay separate fees and clearly indicate which classes or goods/services are being divided. This is a strategic option for businesses rolling out products or services in phases.

Frequently Asked Questions

  1. What if I file a Statement of Use too early?
    A Statement of Use filed before the USPTO issues a Notice of Allowance is considered premature and will not be reviewed. Wait for the Notice of Allowance before submitting.
  2. Can I amend a Statement of Use after filing?
    Yes, but only under limited circumstances. If the original SOU is non-compliant, the USPTO may allow amendments or corrections within a specific timeframe. However, once accepted, it cannot be withdrawn.
  3. How many times can I request an extension?
    You may request up to five six-month extensions, giving you a total of 36 months from the Notice of Allowance to file your Statement of Use.
  4. What counts as ‘use in commerce’?
    Use in commerce means the mark is used or displayed on goods sold or transported across state lines, or on services rendered in more than one state or in interstate commerce. Mere promotional use without actual sales may not qualify.
  5. Is the Statement of Use public?
    Yes, filings and specimens submitted to the USPTO become part of the public record and can be viewed online through the TSDR system.

If you need help with the statement of use trademark, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.