The Roadmap to Trademark Statement of Use Success
Embarking on the trademark registration journey is akin to navigating a labyrinth, with twists and turns at every corner. Among the crucial steps in this expedition lies the Trademark Statement of Use – a necessity for an Intent to Use trademark application. In this blog post, we’ll explore the intricacies of this essential element, shedding light on its definition, purpose, the fees, the steps, and the intricate process that follows its acceptance.
A Trademark Statement of Use is proof that your intent to use trademark is actively used in business. The statement includes a signed declaration, examples showing how your trademark is used, and the required fee.
An Intent to Use (ITU) trademark is a filing that shows your plan to use a trademark in business. It’s helpful for businesses getting ready to launch a product or service. But you need to actually use the trademark within a specific time to register it.
Allegation of Use and Statement of Use both show that you’re using a trademark in business. The main difference is when you submit them. Allegation of Use is before approval, while Statement of Use is after getting a Notice of Allowance (NOA).
If you need more time after getting a Notice of Allowance (NOA) to use your trademark, you can ask for a six-month extension. You can request up to five extensions, each giving you six more months. But you need to show you’re still planning to use the trademark.
Specimens are real examples that show you’re using your trademark in business. For goods, it could be photos of the trademark on products. For services, it might be marketing materials with the trademark.
After acceptance, your trademark moves closer to official registration. If your Amendment to Allege Use is accepted, your application shifts to showing actual use of the trademark in business. The USPTO approves your trademark for publication. If no one opposes, your trademark is registered. Accepted Statement of Use submissions has already completed the opposition period and goes straight to registration.
What is a Trademark Statement of Use?
The Statement of Use – this is a document that transforms your trademark into a tangible reality. This legal statement serves as a testament to the actual use of your trademark in commerce, a critical milestone in the intent to use trademark registration process.
A comprehensive statement of use includes:
Verification or Declaration: Sign and submit a verification or declaration confirming that you, the applicant, are the rightful owner of the mark. This statement should also affirm that the mark is actively in use in commerce and specifies the crucial dates of first use of the mark anywhere and its first use in commerce. This information is seamlessly integrated into the trademark Statement of Use form.
Specimen for Each Class: Provide one specimen per class that showcases the mark in actual use in commerce. This tangible representation is essential for validating the active utilization of your mark. We chat a bit more about specimens further down.
Prescribed Fee for Each Class: Accompany your submission with the required fee for each class, set at $100 per classification.
So, what is an Intent to Use (ITU) Trademark?
To put it simply, it signifies that you haven’t kicked off using your trademark in commerce just yet, but you’re eager to do so within the next few years. The crucial point here is your genuine intent to use it.
The intent to use trademark is particularly beneficial for businesses that are in the planning stages or waiting for the right moment to launch their product or service.
However, it’s essential to note that this isn’t a free pass – you must ultimately put your mark to use within the specified time frame to secure trademark registration.
One significant perk of an intent to use trademark is the ability to secure an earlier application filing date compared to a potential competitor. This could potentially mean your mark takes precedence over someone else’s if a legal conflict arises — either at the USPTO or in the marketplace.
Want to read more about Intent to Use Trademarks? Check out our post – Intent to Use Trademark: The Process & Timeline
Allegation of Use vs. Statement of Use
Before we dive deeper into the trademark Statement of Use process, we should clarify a nuance that has to do with timing.
To assert use in commerce, you have two options: filing an Amendment to Allege Use or a Statement of Use.
The distinction between these two filings lies primarily in when you can submit them.
If you wish to claim use in commerce before your application gets the green light for publication, go ahead and file an Amendment to Allege Use. Like the Statement of Use, the cost is $100 per classification.
It’s crucial to submit the Amendment after your initial application but before your mark gets the nod for publication. If that window is missed, a Statement of Use will have to be filed instead.
For those looking to claim use in commerce after receiving a Notice of Allowance (NOA), the route is a Statement of Use.
Timing matters, so make sure to file your Statement of Use within six months after the USPTO issues the NOA or within an extension period if applicable. This ensures a smooth progression in the trademark registration process.
Both forms can only be filed when you’ve genuinely used your mark in commerce, specifically on or in connection with all the goods and/or services listed in your application/NOA.
Extending Your Timeline: Filing for Six-Month Extensions
What if you need more than six months after the NOA issues to put your mark into commerce?
You’ve got an option – file a six-month extension request along with the required fees, which amounts to $125 per classification.
Here’s the drill: the first extension request must be in the USPTO’s hands within six months after they issue the NOA. Alongside the fee, you’ll need to include a verified statement affirming your ongoing genuine intention to use your mark in commerce.
And guess what? You can throw in four more extension requests. Each of these extends the deadline for another consecutive six months.
The USPTO needs to receive each subsequent extension request before the previous six-month extension period wraps up. Apart from the initial requirements, a follow-up extension request should also showcase “good cause.” This means giving the lowdown on your continuous efforts, like market research or strides taken to snag distributors.
If you decide to go all in and request all five extensions, you’ve got a maximum possible extension time of 36 months from the day the USPTO handed out the NOA to get your Statement of Use filed. Plenty of time to dot those i’s and cross those t’s, right?
The Meaning of "Use in Commerce"
Understanding the dynamics of “Use in Commerce” involves delving into two primary scenarios:
Use in Commerce with Goods
This scenario unfolds when your mark finds its place on goods, whether it’s on the actual products, their packaging, or even in the digital realm like webpages. The crucial element here is that the goods must genuinely be sold or transported in commerce. It’s all about the tangible presence of your brand making its mark in the market.
Use in Commerce with Services
For businesses in the service industry, “use in commerce” takes on a different guise. It means actively employing your mark in the sale, advertising, or provision of those services. But it’s not merely a checkbox exercise – the services must be actively in operation, not just theoretical on paper. Moreover, this use must align with the ordinary course of trade, ruling out superficial gestures made solely to reserve trademark rights.
Remember, use in commerce must be part of the “ordinary course of trade,” and not just a token gesture made to secure rights in a trademark or service mark.
Now, let’s navigate through the various types of commerce recognized under federal law: interstate (transactions between two or more U.S. states), territorial (transactions between the United States and its territories), and foreign commerce (transactions between the United States and foreign countries).
Intrastate commerce, confined to a single state, typically falls short of acceptable use in commerce unless it directly influences interstate, territorial, or foreign commerce. It’s a nuanced landscape that demands a strategic understanding of the legal terrain.
Examples of Use in Commerce:
Goods Displayed in a Brick-and-Mortar Store: Imagine your brand-new line of clothing prominently displayed in a physical store, complete with your distinct trademark on each item and its packaging. The physical presence of your goods in the store and their potential sale to customers exemplifies use in commerce.
E-Commerce Platform Sales: Your cutting-edge tech gadgets are not just confined to shelves – they’re showcased on your e-commerce platform, where customers can view, purchase, and have the products shipped. Here, the online presence and sale of your goods through electronic channels embody use in commerce.
Service Promotion Through Advertising: If you run a consulting firm, actively promoting and advertising your services with your trademark constitutes use in commerce. Whether through digital campaigns, print media, or other promotional avenues, the active engagement in service advertising aligns with the concept of use in commerce.
Software as a Service (SaaS) Offered Online: Let’s say you’ve developed a groundbreaking project management SaaS. Users subscribe and actively utilize your software through an online platform. In this case, the provision of your services online, coupled with the use of your trademark within the software and its promotional materials, represents use in commerce.
Claiming Periods of Commerce - The Three Windows of Opportunity
Timing is everything. When it comes to establishing use in commerce, there are three distinctive periods where you can transition from an Intent to Use trademark to an In Use trademark:
Before Approval for Publication:
During the duration between filing your application and the moment the USPTO examining attorney greenlights your mark for publication in the Trademark Official Gazette (TMOG), you have the opportunity to claim use in commerce. This window allows you to file an Amendment to Allege Use, solidifying your claim during this crucial phase.
Within Six Months of the Notice of Allowance (NOA) Issue Date:
Upon receiving a Notice of Allowance (NOA), signaling that your mark has been deemed eligible for registration, you can assert use in commerce within the initial six months following the NOA issue date. To accomplish this, filing a Statement of Use is the key step in transitioning your trademark into active use.
Within a Granted Extension of Time After the NOA Issue Date:
In certain situations, you might require more time to prepare for your product or service launch. If that’s the case, you can still claim use in commerce after receiving a NOA by submitting a Request for Extension of Time to File a Statement of Use. It’s important to note that even with an extension, the Statement of Use must be submitted within the granted extension period, ensuring a seamless transition from intent to actual use.
Presenting Evidence – Specimens
Understanding the trademark statement of use puzzle is incomplete without grasping the significance of specimens. But what exactly is a specimen?
A specimen is a real-life example showcasing how you actively use your trademark in commerce with your goods or services. It could manifest as your trademark on the goods themselves, their packaging, in point-of-sale displays, or within the sale, rendering, or advertising of your services.
Goods Specimens:
For tangible goods, a specimen may involve providing photographs showing the mark on the actual goods or packaging.
Services Specimens:
For services, specimens could include marketing materials or webpages showing the mark used in connection with the services.
Ensuring that your specimens align with the requirements set by the United States Patent and Trademark Office (USPTO) strengthens your case and expedites the approval of your Statement of Use.
Looking for an in-depth read about trademark specimens? Check out our post – Trademark Specimens Explained: A Comprehensive Overview & Examples
Amendment to Allege Use Approval Process
When your Amendment to Allege Use gets filed, your application takes a significant shift. It’s no longer based on your intention to use the mark in commerce but on the real deal – the actual use of your mark in commerce. The next step involves scrutiny by a trademark examining attorney.
If your Amendment to Allege Use checks all the legal boxes and there are no refusals to address, the USPTO green-lights your mark for publication in the online Trademark Official Gazette (TMOG). The TMOG is like the public announcement board, notifying everyone that your mark is on the registration path. Approximately one month after approval, your mark takes center stage in the TMOG.
Within 30 days of the publishing date, anyone foreseeing harm to their business due to your mark can file an objection, commonly known as “opposition.” This proceeding, held before the Trademark Trial and Appeal Board (TTAB), is akin to a federal court process.
An opposition can extend the timeline between the publication of your mark and its official registration. If an opposition is filed, the USPTO will keep you in the loop, and hiring an attorney is a wise move, considering the complexity of opposition proceedings.
Once the 30-day opposition period (including any extensions) wraps up, and any oppositions are resolved in your favor, the USPTO proceeds to register your mark.
Trademark Statement of Use is Accepted – What Next?
In the case of your Statement of Use being accepted, your mark has already been through the opposition period and is not subject to it again. The USPTO initiates the registration process and publishes notice of registration in the TMOG.
Once trademark registration is issued, the USPTO will make it official by uploading the registration certificate to the Trademark Status and Document Retrieval (TSDR) system. Once you have the registration certificate (it will be emailed to the trademark owner and any emails of record), you’re good to go – feel free to start using the coveted ® symbol in connection with your goods and/or services. It’s the official stamp of approval.
In closing…
navigating the labyrinthine path of trademark registration demands a keen understanding of pivotal milestones, and the Trademark Statement of Use stands as a linchpin in this intricate journey. From unraveling its definition to delving into the nuances of its submission process, this blog post has served as a guide through the complexities.
As you embark on your own trademark expedition, consider TradeMark Express as your reliable companion. Whether deciphering the intricacies of specimens or steering through the acceptance process, TradeMark Express offers expert assistance to streamline your trademark registration.
For personalized guidance and support, connect with TradeMark Express – your trusted ally in the world of trademarks.