TRADEMARK STATEMENT OF USE
A commonly misunderstood feature of trademark law is the “In Use” component whereby the Trademark applicant must actually use the mark in commerce. That’s right – merely coming up with a unique name or logo is insufficient. You must also sell something (either a good or service) under the banner of this new trademark. As we’ve noted in previous articles, what precisely qualifies as “Use” is not necessarily obvious but the USPTO has made it clear that mere “token” use does not count. So, you would not be able to sell a single t-shirt to a friend under the banner of your trademark and claim that it has now been “Used in Commerce”. Selling 500 T-shirts to a store, conversely, would qualify as “Use”.
TRADEMARK INTENT TO USE APPLICATIONS
A Statement of Use must be supported by qualifying use of the trademark in commerce. Merely selecting a name or logo is insufficient, and token activity undertaken solely to reserve trademark rights does not qualify. There is no universal minimum number of sales. The inquiry considers whether the use is bona fide and occurs in the ordinary course of trade. For goods, the mark generally must appear on the goods, packaging, or an acceptable associated display, with the goods sold or transported in qualifying commerce. For services, the mark must be used or displayed in connection with services actually rendered in qualifying commerce.
COMMON INDUSTRY PRACTICE WHEN FILING A STATEMENT OF USE
As this alluded to earlier, it is critical for a trademark applicant to understand the nuances involved in the “Use in Commerce” requirement for his/her alleged goods/services. Indeed, the definition of ordinary use in commerce will vary from industry to industry. Perhaps Bona Fide sales in a given widget business demands the sale of 1000 products while in another business, ten sales would in fact serve as a meaningful sale. To this end, third party trademark opposers may allege the trademark holder has not made proper use of the trademark in commerce, vis-à-vis their particular industry, as a basis to invalidate the trademark.
THE INTENT TO USE APPLICATION HAS BEEN GRANTED – NOW WHAT?
Whether use qualifies depends on the nature of the goods or services and the circumstances of the business. Industry practices may help explain whether activity occurs in the ordinary course of trade, but they do not create a fixed sales threshold. Applicants should retain records supporting genuine commercial activity, the relevant dates of use, and how the mark identifies the goods or services. A particular quantity of sales does not automatically establish or defeat qualifying use.
REQUESTING AN EXTENSION OF TIME TO FILE A STATEMENT OF USE
Within six months of the Notice of Allowance issue date, the applicant generally must file an acceptable Statement of Use or a request for a six-month extension. The first extension request must be filed before the initial period expires and must include the required fee and a verified statement of the applicant’s continued bona fide intention to use the mark in commerce.
Up to four additional six-month extensions may be requested, for a maximum of five extensions. Each subsequent request must be filed before the current extension period expires. If all five extensions are timely obtained, the maximum period for filing the Statement of Use is 36 months from the Notice of Allowance issue date.
Subsequent extension requests must also include a showing of good cause describing ongoing efforts to use the mark. Depending on the circumstances, these efforts may include product development, manufacturing, market research, distributor acquisition, or obtaining necessary approvals.
If an extension request is deficient or denied, promptly review the USPTO communication for the available response procedure and deadline. Do not assume that a late request or missing requirement can automatically be corrected after the filing period expires.
INSURANCE AGAINST REJECTION OF A STATEMENT OF USE
An applicant may sometimes file an “insurance” extension request when filing a Statement of Use, or afterward while time remains in the current filing period, provided another extension is available and the applicable requirements are satisfied.
This can preserve additional time to address certain deficiencies that depend on establishing qualifying use or obtaining an acceptable specimen within the permitted period. It does not guarantee acceptance of the Statement of Use or extend the overall limit beyond 36 months from the Notice of Allowance.
Whether an insurance extension is useful depends on the filing history, the remaining extension opportunities, and the particular deficiency. The extension request requires its own government fee.
PRACTICAL GUIDE TO TRADEMARK STATEMENTS OF USE
Qualifying use must be bona fide use in the ordinary course of trade, rather than token activity undertaken solely to reserve rights. Sales volume alone does not determine whether the requirement is satisfied.
Providing services within a single state does not automatically prevent qualifying use in commerce. The relevant inquiry is whether the activity falls within commerce Congress may regulate, which depends on the circumstances.
For an application proceeding under Section 1(b), track the Notice of Allowance issue date carefully. File an acceptable Statement of Use or an available extension request before the applicable deadline, and retain records supporting the claimed use.
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