The Statement of Use is a sworn declaration that your trademark is currently in use in commerce in connection with all of the products and/or services listed in your trademark application. If you filed your trademark application under Section 1(b) (intent to use), you must prepare and submit the Statement of Use before the United States Patent and Trademark Office (USPTO) will grant registration of your trademark. As part of the Statement of Use, the USPTO requires you to (1) set forth the date on which your trademark was first used anywhere in the United States, (2) set forth the date on which your trademark was first used in interstate commerce, and (3) submit at least one specimen showing actual use of your trademark per class of products/services listed in your application.
When Do I File the Statement of Use?
Unlike an Amendment to Allege Use which may be filed at any time prior to your trademark application being approved for publication, the Statement of Use is filed after the USPTO issues the Notice of Allowance, which is a formal notification that your trademark application was approved by the USPTO and that the trademark opposition period has expired. You then have six months from the issue date of the Notice of Allowance in which to file the Statement of Use. In the event you’re unable to make use of your trademark within those six months, you may obtain an additional six months by filing a Request for an Extension of Time. If you fail to timely file the Statement of Use or an Extension of Time, your trademark application will go abandoned. You can request up to five Extensions of Time before you must submit the Statement of Use.
If you only have use of your trademark in connection with some of the products and/or services recited in your application, and you don’t want to file an Extension of Time, then you must permanently delete from your application all products/services you haven’t actually provided at the time you file the Statement of Use. Otherwise, any resulting registration may be subject to cancellation on the basis of non-use or fraud on the USPTO.
Specimens Showing Use of Your Trademark
As part of the Statement of Use, you must submit a proper specimen evidencing proof of use of your trademark. If your trademark is used in connection with products, acceptable specimens include labels, tags, stickers, product packaging, instruction manuals, or photographs of the product itself with the trademark displayed on it. On the other hand, if your trademark is used in connection with services, acceptable specimens would include advertisements, brochures, flyers, and website printouts that promote the services. Again, you must submit at least one specimen for each class of products/services listed in your trademark application.
What Happens After I File the Statement of Use?
After the Statement of Use is submitted, the trademark examining attorney assigned to your application will review it. If it meets all of the requirements, it will be accepted and the USPTO will issue the Certificate of Registration within 2-3 months. If the Statement of Use is rejected, the trademark examining attorney will notify you in a trademark office action of the reasons for the rejection (such as a trademark specimen refusal) and will give you time in which to remedy the problem. While some rejections can be overcome, others can’t. Should the rejection be incurable, you will have no choice but to allow your application to go abandoned and to begin the trademark application process all over again by filing a new trademark application.
Once the Statement of Use is filed, it may not be withdrawn for any reason. Therefore, it’s absolutely critical that you’re able to meet all of the legal requirements for filing the Statement of Use and that no mistakes are made in the preparation and filing of the Statement of Use.
Questions About the Statement of Use?
I’m experienced US trademark attorney Morris Turek. If you have any questions about whether you’re in the position to file the Statement of Use, or perhaps would like a trademark attorney to help you prepare the Statement of Use, please give me a call at (314) 749-4059 for your free legal consultation. In the alternative, you may request a consultation by sending me an email at morris@yourtrademarkattorney.com or by filling out my contact form (below). I look forward to hearing from you soon.