WHAT IS A TRADEMARK STATEMENT OF USE?
The United States Patent and Trademark Office (USPTO) requires a desired name/logo/slogan to be used in interstate commerce before awarding it trademark rights. In order for the applicant to convey to the USPTO that the trademark does, in fact, meet the Use in Commerce requirement, the applicant must submit a Statement of Use. A Trademark Statement of Use is an affirmation made by the Applicant to the USPTO that the trademark is in fact, now “In Use” in interstate commerce, and is rendered by submitting a form provided by the USPTO. Thus, principally, a Statement of Use is a signed declaration to the USPTO that the goods/services listed in the trademark application have been sold, in a meaningful amount, under the banner of the trademark in at least two States (satisfying the “interstate commerce” requirement).
DO I NEED TO FILE A STATEMENT OF USE
The matter of Statements of Use most often arises when an applicant initially files an Intent to Use, 1(b) Trademark Application and needs to perfect it with a Statement of Use in order for the TM application to register. Remember, in order for a name/logo/slogan to rise to the level of an actual Trademark, it must be used in interstate commerce. However, most startups and small businesses have not yet used their mark in interstate commerce at the time of filing because their companies are just starting out and sales have not yet been made. Thus, the purpose of the Intent to use application is to instruct the USPTO, we are not yet using the mark in commerce but we Intend to use it in the future. The USPTO responds, ‘Great – submit your 1(b) intent to use application now and a Statement of Use in 6 months.
TRADEMARK STATEMENT OF USE EXAMPLE
Remember, with a Statement of Use, we are doing two things;
- Submitting a Signed Declaration to the USPTO that the trademark has now in fact been used, in meaningful amounts, in interstate-commerce and;
- Providing a “Specimen”, or illustration of how the trademark has been used in Interstate Commerce
Without both of these items being satisfied, the trademark SOU will be rejected.
So, let’s imagine that a sports apparel company submitted an Intent-To-Use trademark application for the word, “ALPHAME” and assigned to the Application CL 025, for the goods, “Shirts, Pants, Hats”. In order to submit the Statement of Use, the company will first have needed to sell a “meaningful” number of goods across State Lines. What qualifies as a Bona Fide Sale, or “Meaningful” number? Unfortunately, the USPTO does not give a set, numerical amount. Instead, the Applicant should consider some bench mark standards to help guide this determination;
- Have the sales been made during the ordinary course of business, rather only occasionally?
- Were multiple sales made rather than merely a single “token sale”?
- Were sales made to companies and/or a diverse group of buyers, rather than to friends and family?
if you can answer yes to these three questions, you have likely satisfied the Use in Commerce Requirement
HOW MUCH IS A TRADEMARK STATEMENT OF USE?
The USPTO allows applicants to file Statements of Use either electronically or through the mail. In the event that the applicant chooses to file the Statement of Use electronically, the USPTO filing fee is $100.00 per class. Conversely, to file the Statement of Use form through the mail, the USPTO filing fee is $200.00 per class. Remember, a Class represents a “type” of Good or Service. Therefore, depending on the number of Classes the trademark applicant originally filed when submitting the initial trademark application, the government fees for filing the requisite Statements of Use will vary. For example, suppose a trademark Applicant filed an application for the mark, “ALIZOMA”, and designated the following four classes; Pants, in CL 025, Watches in CL 014, Tires in CL 012, Vitamins in CL 005. When filing the Statement of Use, the Applicant will be required to pay $400.00 ($100.00/CL x 4CL).
USPTO Statement of Use Form
WHEN TO FILE A TRADEMARK STATEMENT OF USE
Statements of Use are proof that the Applicant is, in fact, using the trademark in commerce. The applicant must file the Statement of Use within six months of the USPTO issuing the Notice of Allowance (NOA). In the event that the Applicant is not yet using the mark in commerce (within this-month timeframe), the applicant must submit a Statement of Use extension request. 37 C.F.R. §2.88(a)(1); see15 U.S.C. §1051(d)(1)-(2).
Requesting an Extension of Time for the SOU
The trademark applicant has 6 months from receiving the Notice of Allowance (NOA) to provide the USPTO with a Statement of Use. In the event that the applicant has still not used the mark in commerce by the end of the 6 month period, the applicant may file an extension of time request. Here, the applicant is instructing the USPTO both of his/her continued intent to use the mark in commerce (by describing ‘ongoing efforts to develop the products/services including market research, R & D etc.). Finally, the applicant must pay an additional $125.00/CL Fee. Please note, the applicant can only file up to 5 requests for extensions so please keep striving to use your mark in commerce ASAP to register your trademark.
