If you’ve started the process of registering a trademark, you may have come across the term “Statement of Use.”
But what exactly is a Statement of Use in the context of a trademark application?
And how do you know whether you’ll need one for your business?
At Massingill, we can help you answer these questions and more.
Statement of Use for Trademark Filings: An Overview
First and foremost, it’s important to have a basic understanding of what a Statement of Use is. Use our guide below to learn more.
What Is a Trademark Statement of Use?
A Statement of Use (SOU) is a form that the United States Patent and Trademark Office (USPTO) requires trademark applicants to file in certain situations.
This SOU is an affirmation by the trademark applicant confirming that the applied-for mark is actually being used in commerce.
A prerequisite to trademark registration is that the name, logo, or slogan being applied for must be used in commerce.
Essentially, this means that the mark must actually be used, marketed, or sold in connection with the goods or services described in the initial application.
Sometimes, however, at the time of filing the initial application, you may not yet be using your mark in commerce.
Thus, a Statement of Use allows trademark applicants to provide their verification of use after their initial filing.
When You Need to File a Statement of Use
Importantly, you do not need to file a Statement of Use for all types of trademark applications.
As noted above, if you are already using your proposed mark in commerce at the time of filing your trademark application, no SOU is required.
For this, you would file under a section 1(a) filing base for Actual Use in Commerce.
However, if you are not yet using your mark in commerce, but have a good faith intention to do so in the future, you can instead file under a section 1(b) intent-to-use (ITU) filing basis.
But while you can submit your ITU trademark application at any time, you will not be able to officially register your mark unless and until you can show that you’ve started using it in commerce through your SOU.
Timeframe for Filing a Trademark Statement of Use
Be sure to file your SOU within the appropriate amount of time.
Specifically, you must file your Statement of Use within 6 months of the date of issuance of the Notice of Allowance from the USPTO.
You may have an opportunity to request an extension of this deadline. However, failure to comply with the initial deadline or request an extension can result in the abandonment of your application entirely.
What to Include in Your Statement of Use for Trademark Filing
Once you’ve started to use your applied-for mark in commerce, you’re ready to submit your Statement of Use to the USPTO. To do so, you’ll need to include:
- At least 1 specimen showing the mark as used in commerce;
- A certification or declaration stating that you are using the mark in commerce; and
- The appropriate filing fee depending on the number of trademark classes you’re applying for.
So long as the Statement of Use is timely and meets the minimum filing requirements, the USPTO examining attorney will then review the SOU and proceed with the registration process from there.
A question that many trademark applicants have is, What is a specimen?
In short, a specimen is evidence of the use of the mark in commerce. Examples of proper specimens might include a:
- Photograph showing your mark on a label or tag attached to goods you sell;
- Scan of packaging showing your mark that you affix to the goods you sell; or
- Printout of an advertisement or your website showing your mark in connection with services you offer.
If you have questions about what specimen to use, speak with a qualified trademark attorney as soon as practicable.
Need Assistance Filing a Statement of Use for a Trademark in Austin, TX?
If you have questions about Statements of Use, or trademark applications in general, we want to help.
At Massingill, we pride ourselves on taking complex business legal matters and simplifying them for our clients.
Whether you need assistance with your trademark application or anything else in the business lifecycle, our business law attorneys have the tools, resources, and experience to help.