TMIN: Statement of Use

Part 10 of Trademark Information Network Series

Published on Apr 20, 2017

This video introduces the "Statement of Use" and explains when the document is required for registration of a trademark. The video also highlights related forms, documents, and concepts that may be necessary to submit the Statement of Use. WARNING: If you filed your application under a Section 1(b), Intent-to-Use, basis and fail to timely file a Statement of Use, your application will be ineligible for registration.

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Have you received a Notice of Allowance? Is the deadline approaching for your Statement of Use? Are you unsure what these documents are and what to do about them?

Well, you've come to the right place. Over the next few minutes, we'll explain what a Statement of Use is, why it's necessary, and what you will need to complete the form. We'll also discuss what to file if the due date is approaching and you're not quite ready to submit your Statement of Use. Finally, we'll cover what you may be able to do if you missed your filing deadline.

In order to understand the specifics of the form, however, we need to take a step back and take a look at a larger concept: basis.

If you remember the earlier news broadcast about "basis," you might remember that the most commonly used filing basis in the United States is Section 1. And that there are two options under Section 1: Section 1(a) and Section 1(b).

Section 1(a) means that you are already using the mark in commerce and Section 1(b) means that, although you are not yet using the mark in commerce, you have a bona fide intent to do so.

If you're unfamiliar with what is meant by "use in commerce," think about it this way. "Use in commerce" means that you have an ongoing business and actively are offering your goods or services across state lines or internationally.

For goods, "use in commerce" generally involves selling your goods across state lines with the mark displayed on the goods themselves or the packaging for the goods, like shoes that are made in one state and sold nationwide.

For services, "use in commerce" generally involves offering a service to customers in another state or rendering a service that affects interstate commerce, like restaurants and gas stations and hotels.

And "use in commerce" doesn't have to be just in the United States: it can involve commerce between you and a U.S. territory or a foreign country. As long as your use of the mark isn't solely within one state, you've met the requirement. This is important because in order to move your application forward to registration, you must be using your mark in commerce.

That means that if you currently have a Section 1(b) basis in your application, you must amend it to Section 1(a) to register your mark. This is true even if you had used your mark prior to filing, but nonetheless filed under Section 1(b).

The form used to make this amendment is the Statement of Use, or "SOU." It allows you to turn your Section 1(b) application into a Section 1(a) application, one of the final hurdles to registration of your mark. And, after all, that's why you filed the application in the first place, right?

Now, you might be wondering how you know it's time to file your Statement of Use. It's very simple. You will receive a document called a Notice of Allowance. It's sometimes called a "NOA" or an "N-O-A."

The Notice of Allowance means that your mark has passed through the publication phase and may almost be ready to register. The only step that remains is proving that you are using your mark in commerce by filing the Statement of Use.

The document also starts the clock ticking. You only have six months from the date of the Notice of Allowance to either submit the Statement of Use or request an extension of time to file the Statement of Use. To avoid abandonment, make sure to comply with the six month deadline.

So, now that you understand why you need to file the Statement of Use and when you need to file it, let's discuss the specifics of what you'll encounter in the online form.

You will be asked to provide the following: the date when you first used the mark, the date when you first used the mark in commerce, a signed declaration that you are now using the mark in commerce for the identified goods and services, a specimen of use, and the filing fee.

Once you file the Statement of Use, be aware that registration is not guaranteed. The USPTO will review the Statement of Use and may find issues that must be addressed. For example, the submitted specimen may not show valid trademark use.

If you've filed a trademark application before or have watched any of the earlier broadcasts, you might already know what is meant by a "Specimen of Use." As a reminder, a "specimen" shows how you use your mark in commerce in connection with your goods or services. It could be a label, a container, or a hang tag for goods or an advertisement if you applied for services. The form requires you to submit your specimen digitally, so be sure to have a digital photograph or copy of the specimen in JPEG or PDF format.

If you need more information about specimens or just want a refresher, be sure to watch the Specimens news broadcast, which provides examples and explanations of acceptable submissions.

Now, you might be wondering, "What if I've received the Notice of Allowance, but I haven't yet used the mark in commerce?" Or, "I can't find an acceptable specimen to submit?" Well, if that's the case, you can request an Extension of Time to file the Statement of Use.

To request an extension, use the provided form, but be sure to keep in mind: the time and circumstances under which you may file an extension request are limited. You must file it on or before the date your Statement of Use is due. Each extension request only lasts for six months and you may only file up to five extension requests. After the first request, you must state your ongoing efforts to use the mark when requesting any more extensions and remember there is a filing fee for each request.

The online form provides checkboxes for the most common types of acceptable ongoing efforts, such as "product or service research or development," "market research," and "promotional activities."

If you miss the filing deadline for the Statement of Use or the extension requests, the USPTO will consider your application abandoned. And, in order to revive it, you must file a Petition to Revive, generally within two months of the abandonment date, and pay a petition fee. You may also have to comply with other requirements. There is no guarantee you will be able to revive your application if it goes abandoned, so keep a close eye on your application status. For more detailed information about Petitions, be sure to watch the Petitions news broadcast, also available on the USPTO website.

When you're ready to file your forms, it is strongly recommended that you use the Trademark Electronic Application System or TEAS, T-E-A-S. You may have used TEAS to file your initial application.

There are TEAS forms for both the Statement of Use and the Request for Extension of Time to File the Statement of Use. Simply open the "Intent-to-Use" forms page and select the form that applies to your situation.

The forms include lots of information and helpful links, so be sure to read them thoroughly before submitting. And, although you hopefully won't need it, TEAS can also be used to file a Petition to Revive form.

And those are the basics. Just remember, in order to register your mark under Section 1, you must show the USPTO that you have used your mark in commerce. So, if you initially filed your application under the Section 1(b) Intent to Use basis, you must file a Statement of Use to prove that you're using the mark in commerce. And the easiest way to do so is by using the TEAS form.

Feel free to replay this broadcast at any time and click on any of the links within the forms for more information. And keep an eye out for more of these broadcasts through the website.

I'm Grant Gainsworth, Trademark Information Network.

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