Filing a trademark application with the U.S. Patent & Trademark Office requires you to choose a “filing basis” for your application. You must have a valid filing basis for registration of your trademark. Most of these filing bases have very strict requirements. However, the “intent to use” basis only requires that you have a bona fide intent to use your trademark. As a result, it is very common for trademark applicants to use this as a filing basis.
While the intent to use application may not have strict requirements for filing, it also requires you to do more work on the back end. Specifically, you must file a Statement of Use in order to finalize your trademark registration. In this post, I will explain what the Statement of Use filing and what information it contains.
The Notice of Allowance
For the most part, the registration process is the same regardless of which application filing basis you used. Applications filed on an intent to use basis have some extra steps, though. After an intent to use application is reviewed and approved by the Trademark Examining Attorney, it is then published for opposition. This is where the intent to use application process differs from the other filing bases.
Once the application goes through publication, the next step is that the Trademark Office will issue what is called a Notice of Allowance. This means that your application has been approved for registration, but a Statement of Use must be filed before the process can be completed and you can receive your registration. The Notice of Allowance is also important because it establishes the deadline for your next filing. You must file either the Statement of Use or for a six-month extension within 6 months of the date the Notice of Allowance issued. If you fail to make either filing by that date, your application will go abandoned.
Statement of Use
Before you can file a Statement of Use, you must actually provide the products/services listed in your application in commerce in the United States under your trademark. If you have several products/services in the application, but have only provided some of them, you can still file a Statement of Use. However, you would have to delete any products/services not provided prior to filing.
To be accepted, your Statement of Use will need a few things. Most importantly, you must show how your trademark is used by including a proper specimen. Finding a proper specimen can sometimes be tricky. Typically a specimen for products consists of photographs of the products themselves or product packaging. For services, specimens commonly consist of screenshots from a website. Your trademark must appear in the specimen and match how it appears in your application. Also, you will need to include the dates that the mark was first used and first used in interstate commerce within the United States.
Once submitted, the trademark examining attorney will review the Statement of Use. If they find it to be acceptable, your application will proceed to registration. Typically you would receive the Certificate of Registration the next few months. If the Statement of Use is not acceptable, you will receive an Office Action explaining the rejection. You will have to respond and try to correct any issues raised in the Office Action. It is critical that the Statement of Use is filed correctly, because it cannot be withdrawn. Some mistakes with this filing could mean that you have to abandon your application and start the process all over again.
Extensions of Time
If you are approaching the deadline after receiving a Notice of Allowance but do not have use of the trademark, you can instead file a Request for an Extension of Time. Filing this request will add six months to the original deadline (regardless of when you file the request). You are allowed to file up to five Requests for an Extension of Time, but must pay a filing fee each time. If you file for all five extensions, you are not able to request additional time. Instead, you will need to file a Statement of Use by the deadline, or your application will go abandoned.
Are You Ready To Submit a Statement of Use?
The Statement of Use filing is critical to your application. You need to be sure that it is prepared and filed correctly. If you would like to speak with an experienced trademark attorney about your Statement of Use, please feel free to call me at (480) 360-3499, email me at email@example.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.