When filing a trademark application with the U.S. Patent & Trademark Office, there are two main filing statuses that you are likely to use. These are “In Use” and “Intent To Use,” as discussed in this previous blog post. If you have filed on an Intent To Use basis, you will have to eventually file what is called a Statement of Use. This is an additional step that is not required for In Use applications. In Use applications contain the same information, but it is submitted within the original application. This post will explain when the Statement of Use needs to be filed, and what information it contains.
If you filed your application on an Intent to Use basis, it will follow the same steps as an In Use application. However, after the publication period, your application will not go to registration. Instead, the Trademark Office will issue a Notice of Allowance. Receiving a Notice of Allowance means that your application has been approved for registration and that there are no oppositions pending against your application. All that remains is for you to show use of the mark by filing an acceptable Statement of Use.
The Notice of Allowance is also important because it establishes the deadline for your Statement of Use filing. Your Statement of Use is due within six months of the Notice of Allowance issue date. However, you can also file a Request for an Extension of Time by this deadline if you are not ready to show use. You can actually file up to five Requests for an Extension of Time, but each one has its own filing fee. But eventually you will have to file the Statement of Use, or your application will go abandoned.
To show your use of the applied-for mark, your Statement of Use will need three things. First, you will need to include the date that the mark was first used within the United States. You must also include the first date that your mark was used in interstate commerce. And finally, you must include a proper specimen which shows the use of your mark in commerce. Finding a proper specimen can sometimes be tricky, but typically this can consist of product tags or labels, photos of the product, screenshots from a website, or instruction manuals. The applied-for mark must appear in the specimen.
Once submitted, the trademark examining attorney will review the Statement of Use. If they find it to be acceptable, your application will go to registration. Typically this means that your Certificate of Registration will issue within the next month or two. If your Statement of Use is not acceptable, you will receive an Office Action, explaining the rejection. You will have six months 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 errors could mean that you have to abandon your application, lose your priority filing date, and have to submit a brand new application.
Have You Received a Notice of Allowance? Are You Ready To Submit a Statement of Use?
If you are ready to submit your Statement of Use, you want to be sure that it is prepared and filed correctly. You are near the end of the trademark registration process, and errors here can be extremely costly. If you would like to speak with an experienced trademark attorney about your Statement of Use, please feel free to call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
