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).

WHAT IS A STATEMENT OF USE?

A Statement of Use (SOU) is a formal declaration filed with the United States Patent and Trademark Office (USPTO) in the context of trademark registration. It is a crucial step in the trademark registration process for certain applications.

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.

The Statement of Use includes the following key elements:

1. Verification of Use: The SOU confirms that the trademark is being used in commerce for the specific goods or services listed in the original application. It includes a sworn statement that the mark is currently in use in the ordinary course of trade.
2. Specimens of Use: Along with the SOU, you need to submit specimens of use that show how the mark is being used in connection with the goods or services specified in the application. Specimens can include labels, tags, packaging, brochures, advertising materials, or other examples that demonstrate the mark’s actual use.
3. Filing Fee: There is a fee associated with filing the Statement of Use.

The USPTO requires the Statement of Use to be filed within a specific time frame after the initial Notice of Allowance (NOA) is issued for the ITU application. If you fail to file the SOU within this timeframe or if the USPTO finds any deficiencies in the SOU or specimens, your application may be abandoned.

It’s important to note that not all trademark applications require a Statement of Use. If your application is based on actual use of the mark in commerce from the beginning, you don’t need to file a Statement of Use; instead, you would submit evidence of use with your initial application.

For specific guidance on filing a Statement of Use or any other aspect of the trademark registration process, it’s advisable to consult with a trademark attorney or refer to the USPTO’s official guidelines and resources.

TRADEMARK STATEMENT OF USE EXAMPLE

Remember, with a Statement of Use, we are doing two things;

1. Submitting a Signed Declaration to the USPTO that the trademark has now in fact been used, in meaningful amounts, in interstate-commerce and;
2. 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;

1. Have the sales been made during the ordinary course of business, rather only occasionally?
2. Were multiple sales made rather than merely a single “token sale”?
3. 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

CAN YOU USE A TRADEMARK WITHOUT REGISTERING IT?

Yes, you can use a trademark without registering it. Trademark rights can be established through actual use of the mark in commerce, even without formal registration. This is known as a common law trademark. However, the protection offered to an unregistered trademark is generally limited compared to a registered trademark.

The benefits of using an unregistered trademark are:

1. Common Law Rights: When you use a trademark in connection with your goods or services, you automatically gain common law rights in the geographic areas where you use the mark. This means you have some protection against others using a confusingly similar mark in the same or related business.
2. TM Symbol: You can use the ™ symbol to put the public on notice that you are claiming rights in the mark. For example, “MyBrand™.”
3. Deterrence: Your common law use can act as a deterrent to others who might consider using a similar mark in your market.

However, there are some limitations and potential drawbacks to using an unregistered trademark:

1. Limited Geographical Scope: Common law rights are typically limited to the geographic areas where you are using the mark. This means someone else might be able to use the same or similar mark in a different region.
2. Weaker Protection: Unregistered trademarks are generally harder to enforce and protect compared to registered trademarks. Proving your rights in court might be more challenging without the presumption of validity that comes with a registered mark.
3. Inability to use ® Symbol: The ® symbol is reserved for registered trademarks. You cannot use it for an unregistered mark.
4. Trademark Infringement Challenges: Enforcing your rights against infringers can be more difficult and costly without a registered trademark.
5. Priority Disputes: In case of a dispute with another party over the use of a similar mark, establishing your prior use can be more complicated without a registration certificate.

Registering a trademark with the appropriate government agency (e.g., the United States Patent and Trademark Office in the US) offers stronger protection and additional benefits, including nationwide protection, the ability to use the ® symbol, and a legal presumption of ownership and validity. If you anticipate significant commercial use of your trademark and want maximum protection, it is generally advisable to consider formal registration. However, registering a trademark involves specific requirements and fees, so it’s essential to consult with a trademark attorney for guidance based on your specific situation.

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).

HOW TO GET A TRADEMARK STATEMENT OF USE EXTENSION

The process may vary depending on your jurisdiction, but here are the general steps you might need to take:

1. Check Eligibility: Before applying for an extension, make sure you are eligible to do so. In many countries, you can request an extension if you have a valid reason for not using the trademark in commerce within the initial period.
2. Review Timeframes: Familiarize yourself with the timeframes and deadlines for filing the statement of use. Extensions are typically granted for a specific period, and you must apply for the extension before the initial deadline expires.
3. Prepare the Extension Request: Obtain the appropriate extension request form from the trademark office’s website or office. Some jurisdictions might require a specific form for extension requests.
4. Provide a Valid Reason: In your extension request, you’ll need to explain the valid reason for not using the trademark in commerce within the initial period. Common reasons include production delays, unexpected market conditions, or other circumstances beyond your control.
5. Pay the Extension Fee: Most trademark offices require a fee for filing an extension request. Make sure to include the correct fee along with your application.
6. Submit the Extension Request: File the completed extension request along with the required fee. You can usually submit it online through the trademark office’s website or by mail, depending on the options available in your country.
7. Await Approval or Response: After submitting the extension request, you’ll need to wait for the trademark office’s response. If your extension request is approved, you will be granted additional time to file the statement of use.
8. File the Statement of Use: Once the extension is granted, you must use the additional time to either begin using the trademark in commerce or prepare and submit the statement of use as required by the trademark office.

Remember that the specific procedures and requirements for obtaining a trademark statement of use extension can differ depending on the country’s laws and regulations. It’s essential to consult with a trademark attorney or refer to the official guidelines from the relevant trademark office to ensure you comply with the correct process and meet all the necessary requirements.

When to file a statement of use.

1. 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 prior to 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.

A complete statement of use. A complete statement of use must include the following:

1. 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.

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.

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.

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.

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.

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.

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

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).

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

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.