What is a Statement of Use in a trademark application?
If you’re a first-time trademark applicant (or a third-time trademark applicant!) and a Statement of Use (SOU) is being required of you, you might be scratching your head. What exactly is expected?
To know what a SOU is, you’ll first need to know what constitutes an Intent to Use (ITU) trademark application.
An ITU application is filed when a trademark applicant (like yourself) wants to register a trademark that is not currently being used in public commerce. Think of it as claiming dibs on something; you’re not currently utilizing the trademark, but you plan to soon!
Typically, if your ITU application is successfully filed and allowed, you’re given a Notice of Allowance from the US Patent and Trademark Office. This means that you’ve been allowed temporary ownership of the trademark in question over a period of time typically lasting six months (but extendable to 3 years). So, at some point before the six months is over, you’re expected to follow up with the USPTO by filing a Statement of Use or asking for an extension of time to file a Statement of Use. This is you saying, “Look, I am now actually using the trademark that I filed for under the ITU basis!” If you don’t file a Statement of Use within this time frame or extend the deadline, then your trademark application will be abandoned.
What exactly do I need to show when I file a Statement of Use?
How you indicate that you’re using your trademark is up to you, but the most common options to present (with products) are labels, packaging, tags, or even instruction manuals with the trademark visible on the products themselves or their packaging. If your trademark is associated with a service, then things like brochures, public websites, or published advertisements work just as well (with the trademark visible). When you file a Statement of Use, you also need to indicate the date that your trademark was first used in public commerce, as well as confirm that the mark has been used on all the goods/services that you listed in the application (or, you can note that you don’t intend to use the trademark in one or more ways if you’ve changed your mind since filing; in which case products or services not in use can be deleted).
In short, you’re showing to the USPTO that your trademark is being used publicly and in inter state commerce (meaning you sell to another state than where you are located), and in keeping with typical trademark usage concerning the class of your goods or services. This also means that trademarks used sparingly or merely between private parties (like friends or relatives) often do not meet the necessary metrics for an SOU to be accepted. Again, the trademark must be used consistently, legitimately, and in the normal course of trade for your Statement of Use to be accepted.
What if I need more than six months after filing an ITU?
That’s okay! The USPTO allows for a Request for an Extension of Time if your proposed trademark is not currently in use. In fact, you can do this up to five times in a row before an SOU is officially required.
*An important distinction: Technically speaking, a SOU can be filed only once the USPTO issues a Notice of Allowance, and this response time varies. However, if you’re ready to file a Statement of Use (meaning you can prove your trademark’s use in commerce) before the USPTO responds, you’ll actually file for an Amendment to Allege Use instead of a Statement of use. In short, it’s turning your initial ITU application into an in-use application, but for your purposes it amounts to the same thing.
Note in both cases (Filing a Statement of Use and asking for an Extension of Time), you will have to pay additional government fees per class (currently the fee to submit a Statement of Use is US$100 per class and the fee to obtain a 6-month Extension of Time is US$125 per class).
Once your SOU is filed and accepted by the USPTO, registration has officially been a success! Congratulations!
Any questions about this process? Are you considering filing an application based on intent to use and want to walk through the above steps with an expert? Are you currently waiting for the USPTO to respond so that you can file a SOU? No problem! The team at Trademark Angel, Inc. is happy to assist with any aspect of your trademark application. Contact us now with no obligations!
The Trademark Angel Team