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
Given the Use requirement, you might wonder how a startup company can protect its trademark before sales are made; after all, a startup may begin to market its brand and expose its trademark to the marketplace without actually selling anything. To account for this scenario, the USPTO provides an applicant with the opportunity to file an “Intent To Use”, 1(b) application. Here, the applicant is suggesting “we’re not presently using the mark in commerce but we intend to use the mark in the future.” Indeed, Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), asserts that an applicant may “file a trademark or service mark application based on a bona fide intention to use a mark in commerce” under circumstances showing the good faith of such person.
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?
When the United States Patent and Trademark Office (USPTO) issues a Notice of Allowance in response to the acceptance of an Intent-to-Use Trademark Application, the trademark applicant must file a Statement of Use to convert the mark into a Registered Trademark. A Statement of Use is simply a verified statement that the goods and services listed in the trademark application are being used in connection with the trademark. The Statement of Use must include the first date the trademark was used in connection with the goods or services in commerce and should be accompanied by a “Specimen”, or real world example of the mark’s use in commerce.
REQUESTING AN EXTENSION OF TIME TO FILE A STATEMENT OF USE
Within six months of the Intent to Use trademark application’s issuance of a Notice of Allowance (NOA), the applicant must provide the USPTO with the Statement of Use . In the event that the Mark is still not in Use by the end of the six months, the applicant may request an extension. An applicant may be granted up to five Requests for Extension to File a Statement of Use with the USPTO if the applicant is not ready to file the actual Statement of Use. Each extension grants six additional months for the applicant to use the goods or services in commerce. A Notice of Allowance could be granted for up to three years if the applicant files timely Requests for Extensions of Time, remits the filing fees, and maintains bona fide intent-to-use the trademark in commerce. In addition, the applicant must be actively pursuing using the trademark in commerce, and able to document the ongoing efforts.
As noted, the first request for an extension of time to file a Statement of Use must be delivered to the USPTO within six months of the date of allowance and include a verified statement of bona fide intent to use the trademark in commerce along with the USPTO filing fee. Any subsequent request for extension must include a showing of good cause in addition to the elements necessary for the first extension to be granted. Showing good cause can include any of the following (or similar activitie: manufacturing, research and development, promotion and marketing, distributor acquisition, or requests for government approvals/licensing. Each request must be submitted within six months of the deadline.
Without a showing of good cause, the USPTO can deem the Request for an Extension of Time inadequate. The USPTO will then issue an Office Action denying the Extension Request. An applicant will have thirty days to answer the denial with a verified showing of good cause. Trademark Manual of Examining Procedure (“TMEP”) § 1108.02(h) permits the USPTO to grant the extension even when the statutory period for filing the Statement of Use has expired.
INSURANCE AGAINST REJECTION OF A STATEMENT OF USE
To account for doubt as to the admissibility of the proposed Statement of Use, the USPTO will accept a Statement of Use accompanying the request for an extension. The applicant retains the option to file a Request for an Extension to File the Statement of Use along with filing the Statement of Use within the statutory period. This is a pre-emptive measure sometimes undertaken to secure additional time to file a Statement of Use which the USPTO may find acceptable.
Thus, the notion of “Double filing” permits an applicant additional time to potentially correct deficiencies in the Statement of Use. The additional filing fees must be paid, and are not subject to refund in the event the additional time is not needed. The decision to file a Request for an Extension to File the Statement of Use simultaneously with the Statement of Use is a strategy that can sometimes help protect the trademark applicant’s business interest in the trademark.
PRACTICAL GUIDE TO TRADEMARK STATEMENTS OF USE
Remember, fundamentally, the idea is that if a person wants to avail himself of trademark rights, he must really and in a meaningfully way, use the mark in commerce. “Token Sales” are not satisfactory. If your sales are not sufficient to support the proposition of running a business, the mark is very likely not actually being Used in Commerce. Similarly, Use in Commerce for the purposes of a Federal Trademark must be “Interstate Commerce”. This means that simply providing an accounting service to a company within your state would not qualify as Use in Commerce, because it is not Interstate Commerce. If you cannot satisfy the Use in Commerce requirement at the time of the application’s submission, File an Intent-to-Use Trademark application and within six months of the NOA, file your Statement of Use along with a specimen of its use in commerce.