Sometimes, it makes sense to start the trademark registration process before you even begin using your trademark. You can do this by selecting Section 1(b) Intent-to-Use as the basis for your application to the U.S. Patent and Trademark Office (USPTO).
However, before your trademark can be registered, you must begin using your trademark in commerce and amend your application to convert it to an application based on Section 1(a) Use, which deals with the actual use of the mark in commerce.
To change the basis of your trademark application from 1(b) to 1(a), you must file a Statement of Use (SOU).
Who Should File a Statement of Use
Trademark applicants who originally filed an Intent to Use trademark application before they started using their mark in commerce are required to file a Statement of Use. This filing indicates that an applicant has begun using the applied-for trademark in commerce. This enables the USPTO to register the
The Notice of Allowance
If you need to file a Statement of Use, the USPTO will send you a Notice of Allowance (NOA). If you receive an NOA, it usually means that your trademark has passed nearly all the steps in the registration process and is almost ready to be registered. All that remains is proving that your mark is actually being used in commerce.
When to File a Statement of Use
If you need to file a Statement of Use, there are two filing windows that you need to be aware of:
- Within six months of the day, the USPTO mails your Notice of Allowance. This is your written notice of conditional approval sent after the mark is published. You can find the date that the Notice of Allowance was issued by visiting http://portal.uspto.gov/external/portal/tow and entering your USPTO serial number.
- Within a previously granted extension period granted by the USPTO.
It is important to pay close attention to these filing deadlines. If you miss the deadline, your application will be considered abandoned. You may be able to revive an abandoned application by filing a petition, paying an additional fee and submitting additional paperwork, but there is no guarantee.
The Statement of Use Form
- The date you first used the mark.
- The date when you first used the mark in commerce. “In commerce” means using a mark in connection with business conducted internationally or across state lines, as opposed to business that is conducted only in one state.
- A signed declaration saying that you are now using the mark in commerce in connection with the goods or services identified in your trademark application.
- A specimen that shows how you are using the mark in commerce. This could be a digital picture of your product with the mark attached, such as on a label or package; or it could be marketing or advertising materials for a service.
- A filing fee of $100.
Requesting an Extension
- If you are not using your mark yet, you can request a six-month extension of time to file the statement of use.
- You must file the extension request within six months of filing the statement of use, and you can only file five requests for extension.
- After the first extension, each additional extension request must describe your ongoing efforts to use the mark. Acceptable efforts might include research and development, market research or promotional activities.
- Additional extension requests must be filed before the expiration of the prior extension.
- There is a filing fee of $125 for each extension request. This fee could change, so check with the USPTO for the most recent fees.
What Happens After You File a Statement of Use?
After you file your statement of use, the USPTO’s examining attorney will review the statement and send you an Office action letter if there are any requirements that still must be satisfied.
If all issues have been resolved and the statement of use is approved, the USPTO typically registers the trademark within two months.
If you are ready to file your trademark statement of use paperwork, LegalZoom can help. LegalZoom filed more U.S. trademark applications in 2013 than the top 40 law firms combined.