As part of the process of trademark marks used, owners must supply a specimen of use to the United States Patent and Trademark Office (USPTO). Submitting the specimen of use is an integral part of the process. The experienced attorneys at War IP Law, PLLC can help explain the USPTO specimen of use and help you file it with the USPTO. Consider contacting a knowledgeable intellectual property lawyer from War IP Law, PLLC for advice and guidance by calling (202) 800-3754.
What Is a Statement of Use from the USPTO?
The statement of use is a sworn statement submitted to the USPTO that declares your trademark is currently being used in commerce. The USPTO statement of use is filed after a business files an “intent to use” trademark application and after a business has started to use the “applied-for” mark in commerce. The statement of use must be submitted before your “applied-for” mark can be registered.
Importance of a Statement of Use
Submitting the statement of use is a necessary step in the trademark application process when an intent to use application is filed. The trademark registration cannot be complete without fulfilling this step and having the USPTO approve it.
Publication in the gazette allows another business to oppose the use of the trademark if it is too similar to a mark it uses and may lead to consumer confusion or if the trademark would be infringing on the business’ intellectual property.
Additionally, timely filing a statement of use for an intent to use application helps prevent the abandonment of the trademark after you have put in all the work to apply for the trademark and someone else from claiming it. If your trademark is considered abandoned, the application will need to be revived or a new application would need to be filed. An intellectual property lawyer with War IP Law, PLLC can help prepare your statement-of-use application.
What Must the Statement of Use Include?
The USPTO statement of use must demonstrate that the trademark is being used on the goods and services identified in the business’ trademark application. The statement of use must include:
- At least one specimen showing the mark used in commerce
- A signed statement declaring the mark is currently being used in commerce
- The appropriate fee
What Is a Specimen?
A specimen is a sample of your trademark being actively used in commerce. Some examples of specimens in use include:
- A photo of the trademark on products you are selling
- A small logo on the left side of a shirt
- A screenshot of the mark on your website
- A business sign
- A brochure about the business
- The trademark that is used to advertise a business’ services
- A display of the trademark on products, packaging, or other marketing tools
- Business cards or stationary with the mark
The specimen needs to be used with the goods and/or services, not simply display the trademark.
What Is Sufficient Use?
The statement of use must indicate that the trademark is used in the ordinary course of business. This must be a legitimate use of the trademark in the ordinary course of business that goes beyond token use, sporadic use, or use so minimal only to reserve the rights in a mark.
The USPTO considers several factors when determining whether bona fide use is present, including how much the mark is used, the nature of the use, the quality of the use, and the typical use of trademarks within the specific industry.
Is a Statement of Use Necessary for an Intent-to-Use Trademark Application?
If you file an intent-to-use trademark application, you do not have to submit evidence of trademark use at the time of your initial filing. On the application, you identify the goods and/or services you plan to be associated with the trademark. For an intent to use application, you do not have to provide specimens or dates of first use in the application itself.
When Must a Statement of Use Be Filed?
You must file a USPTO statement of use within six months from the date listed on the Notice of Allowance. This shows that you are using the trademark to sell your goods and services. If you are not prepared to file the statement of use during those first six months, you can file a request for an extension of time before the six-month deadline expires. This provides you with an additional six months before you have to submit your statement of use. You can file an extension every six months to a maximum of five requests for extensions of time for a total of 36 months from the issuance of the Notice of Allowance. Even if all five extensions of time are taken, you must use the trademark you applied for within three years from the issue date of the Notice of Allowance.
Once you file your statement of use, and the USPTO accepts the specimen of use, the application proceeds for registration with the USPTO. You must continue to maintain your registration. The first maintenance filing is due between the fifth and sixth year of the registration date.
Do I Need to Use the Mark with All of the Goods and/or Services When I File a Statement of Use?
You will need to use your mark on all of your goods and/or services to protect your trademark. However, if the trademark is not yet being used with all of your goods and/or services, you have several options such as:
- Remove the goods or services that are not using the trademark from the application when you file your USPTO statement of use
- File an extension of time
- File a request to divide
A trademark lawyer can review your circumstances and make recommendations about how to handle the situation if your trademark is not currently used on all of your goods and/or services.
Contact an Experienced Trademark Attorney to Help
The USPTO statement of use is one of the final steps to registering your trademark when an intent to use application is filed. Therefore, it is important that you prepare this document carefully so that you can protect your intellectual property rights. An experienced trademark lawyer from War IP Law, PLLC can review your circumstances and make customized recommendations for how to protect your intellectual property rights. Consider contacting a knowledgeable trademark lawyer from War IP Law, PLLC by calling (202) 800-3754 and requesting a confidential case review.