Navigating the Statement of Use for Your Trademark in the USA

A Statement of Use (SOU) is a formal declaration submitted to the United States Patent and Trademark Office (USPTO) that demonstrates your trademark is actively being used in commerce in connection with the goods or services listed in your trademark application. It's an indispensable component of the trademark registration process for applications initially filed on an "intent-to-use" (Section 1(b)) basis.

Intent-to-Use vs. Actual Use

When you file an Intent-to-Use application, you effectively reserve your right to a trademark, giving you time to launch your product or service. However, U.S. trademark law is fundamentally based on "use in commerce." This means that to secure exclusive rights and gain federal protection, you must eventually prove that your mark is genuinely being used to identify your goods or services in the marketplace. The SOU is precisely how you provide this proof. It's important to demonstrate a "bona fide intent to use" the mark when filing an ITU application, backed by objective evidence of actions taken towards its commercial use.

The Critical Link to Trademark Registration

Without an approved Statement of Use, an Intent-to-Use application will not proceed to registration, even if it has cleared all other examination stages. It serves as the final, crucial piece of evidence that transitions your proposed trademark into a legally recognized and protected asset.

When and How to File Your Statement of Use (SOU)

Timing and accuracy are paramount when filing your Statement of Use trademark USA with the USPTO.

The Notice of Allowance and Your Filing Window

After your Intent-to-Use application successfully navigates the examination process and passes through the publication period without opposition, the USPTO will issue a Notice of Allowance (NOA). This notice signifies that your trademark is "allowed," but it is not yet registered. From the date the NOA is issued, you generally have a strict six-month deadline to either file your Statement of Use or request an extension of time.

Understanding Extensions for Filing a Statement of Use

If your US business is not yet ready to demonstrate actual use of the mark within the initial six-month window, the USPTO allows for extensions. You can file up to five six-month extension requests, granting you a maximum of 36 months (three years) from the date of the Notice of Allowance to file your SOU. Each extension request requires a filing fee and a verified statement affirming your continued bona fide intention to use the mark in commerce.

Required Information and Documentation

To successfully file your Statement of Use, you must include:

• Required Fees: Effective January 18, 2025, the fee for filing a Statement of Use with the USPTO will increase to $150 per class. Prior to this date, the fee is $100 per class. For extension requests, the fee will also increase to $150 per class, up from $125 per class, effective January 18, 2025.

• Sworn Declaration: A verified statement, signed by the applicant or someone authorized to act on their behalf, affirming that the mark is in use in commerce for the specified goods/services. This declaration should include the date the mark was first used anywhere and the date it was first used in interstate commerce.

• Specimen(s) of Use: At least one clear, real-world example (specimen) for each class of goods or services listed in your application, demonstrating how your trademark is currently being used in commerce.

Providing Proper Proof of Use: The Specimen Requirement

The specimen is often the most challenging part of filing a Statement of Use. It must clearly show how consumers encounter your mark in the marketplace.

What Makes a Valid Specimen for Goods?

For goods, an acceptable specimen typically shows the trademark directly on the product, its packaging, labels, or tags.
Examples include:

• Product labels or tags affixed to the goods.

• Product packaging (e.g., boxes, bags) displaying the mark.

• Photographs of the product itself with the trademark clearly visible.

• Screenshots of a website showing the product for sale with the trademark prominently displayed, ideally with a "buy" or "add to cart" button, along along with the URL and date.

• Instruction manuals or brochures accompanying the product.

Crucially, the specimen must be a real-world example, not a digitally altered image, mockup, printer's proof, or artist's rendering.

What Makes a Valid Specimen for Services?

For services, acceptable specimens demonstrate the mark's use in advertising or promoting the services.
Examples include:

• Advertisements (digital or print) showcasing the service and the trademark.

• Brochures or flyers describing the services.

• Website printouts (with URL and date) where the trademark is displayed in direct association with the services offered.

• Signage or banners used at a service location.

• Menus or business cards, provided they clearly promote the services and display the mark. General business letterhead or business cards not directly advertising the services may not suffice.

Common Pitfalls to Avoid with Specimens

The USPTO is meticulous about specimens. Common reasons for rejection include:

• Mock-ups or Renderings: Submitting anything that isn't a genuine, real-world example of use.

• Ornamental Use: If the mark is merely decorative and doesn't function as a source identifier.

• Mismatch: The mark on the specimen differs from the mark in your application.

• Lack of Association: The mark is not clearly and directly associated with the goods or services.

• Missing Information for Webpages: Failing to include the URL and date of access for website specimens.

The Consequences of Failing to File a Statement of Use

Missing the Statement of Use deadline or submitting an insufficient SOU can have severe repercussions for your brand.

Abandonment of Your Application

If you fail to file a timely and acceptable Statement of Use or an extension request, your trademark application will be declared abandoned by the USPTO. This means your application process effectively ends, and all previously paid fees are forfeited.

Loss of Rights and Market Position

An abandoned application means you lose your priority filing date, which is crucial for establishing your rights against potential infringers. If your application is abandoned, you generally have two months to petition to revive it, but only if you can demonstrate that the delay was unintentional. Otherwise, you would have to start the entire trademark registration process over with a new application, paying new fees and potentially facing challenges if another entity has since adopted a similar mark.

Why Expert Guidance is Crucial for Your Statement of Use in the USA

Navigating the intricacies of trademark law, especially the Statement of Use, can be daunting for US businesses and individuals. An experienced trademark attorney can significantly streamline the process and mitigate risks. For more in-depth information on trademark examination guidelines, you can consult resources from the International Trademark Association (INTA).

Ensuring Accuracy and Compliance

A skilled attorney understands the specific requirements for specimens of use, the nuances of the sworn declaration, and the importance of accurate dates of first use. They can help you gather the correct documentation and ensure your filing meets all USPTO standards, minimizing the chance of office actions or rejections. For official information and forms, the USPTO website is an invaluable resource for American businesses.

Maximizing Your Chances of Registration

With expert assistance, you can avoid common pitfalls that lead to delays or abandonment. A trademark professional from Secure Mark USA can advise on acceptable specimens, guide you through extension requests, and respond to any USPTO inquiries, increasing the likelihood of a successful and timely trademark registration. For general legal resources and insights into trademark and unfair competition law, the American Bar Association (ABA) provides extensive materials. Businesses looking to protect their marks internationally may also explore the Madrid System administered by the World Intellectual Property Organization (WIPO).

Secure Your Brand's Future with Secure Mark USA

The Statement of Use is a critical checkpoint on your journey to federal trademark protection in the USA. Don't let a procedural misstep jeopardize your brand's future. Secure Mark USA offers expert guidance and comprehensive trademark services to ensure your Statement of Use is filed accurately and efficiently, moving your brand closer to full registration.

Ready to finalize your trademark protection? Contact Secure Mark USA today for a consultation and let our experts handle your Statement of Use with confidence.