A trademark Statement of Use (“SOU”) is a sworn statement that provides United States Patent and Trademark Office (“USPTO”) proof of use in commerce via (1) a specimen and (2) a $100 fee/Class. If you filed a Section 1(b) Intent to Use application, you will need to file a Statement of Use before the USPTO allows you to register.
Below, I explain:
- what a Statement of Use is,
- when to file it,
- what documents you must provide, and
- the trademark Statement of Use fee.
Table of Contents
- 1. What is a Trademark Statement of Use?
- 2. When Do I File It?
- 3. What Documents Should I Submit with the Trademark Statement of Use?
- 4. How Much Does It Cost?
- 5. How Do I File a Trademark Statement of Use?
- 6. Summary and Recommendation
1. What is a Trademark Statement of Use?
As explained above, every trademark application must provide proof of use.
Briefly, the USPTO requires each trademark filed either show proof of use in commerce either:
- (1) at the time of filing—in a “Use in Commerce” application, or
- (2) several months later, for a “Intent to Use” application, but within 6 months from the date a “Notice of Allowance” issues.
A trademark Statement of Use serves as that later proof of use. In essence, a Statement of Use provides proof to the USPTO at a later date that the applicant is lawfully using the mark in commerce. If, and only if, the USPTO receives this document will they register your trademark.
However, there are two downsides to a trademark Statement of Use filing. First, because the applicant must show proof that the goods and/or services are sold under the trademark, causing a slight processing delay. Secondly, there is an additional fee of $100 per International Class of goods and/or services. That raises a question, when should an applicant file a Statement of Use?
2. When Do I File It?
The trademark Statement of Use deadline is 6 months from the Notice of Allowance issuance date. If you filed an Intent to Use application you will receive a Notice of Allowance soon after the end of the trademark’s publication for opposition period. This is only if you did not use something called an “Amendment to Allege Use” to show proof of use earlier (more on this below).
A. Can I Ask For an Extension of Time to Prepare My Trademark Statement of Use?
Yes, you may request what is called “Requests for Extensions of Time to File the Statement of Use” (“Extension of Time”) TMEP § 1108. The USPTO grants 5 total Extensions of Time. Each Extension of Time is 6 months long, for a total of 2.5 years. This gives you plenty of time to submit the required documentation and fee. However, each Extension of Time request costs $125/Class which is $25 more than the trademark Statement of Use. If you fail to promptly request an Extension to Time, then the USPTO will “cancel” your trademark.
As such, it is better to get the Statement of Use filing out of the way sooner and get the R ® trademark symbol.
B. Differences: Statement of Use vs. Amendment to Allege Use?
In contrast to an Amendment to Allege Use, which is filed any time before the trademark is approved for publication for opposition, a trademark Statement of Use is filed only after the trademark opposition period is over, and the Notice of Allowance issues.
Strategically, it is best to wait to get the Notice of Allowance, rather than to file an Amendment to Allege Use. The reason is that an applicant may prematurely waste precious time and money to file an Amendment to Allege Use only to find out that their trademark application received a fatal Office Action. In addition, the Notice of Allowance only issues after the opposition period expires.
Therefore, wait until the USPTO sends you a Notice of Allowance, then file your Statement of Use or Requests for Extensions of Time as soon as possible. This leads us to ask: What documents you should file in your Statement of Use?
3. What Documents Should I Submit with the Trademark Statement of Use?
Your trademark Statement of Use must include three things:
- (1) a sworn statement about the first use date anywhere;
- (2) the declaration about the first use in commerce; and
- (3) specimen(s).
First, it must include the date of first use anywhere. Second, you must include the first use date in commerce. This date establishes the very first time you used the trademark to sell the goods and/or services in the International Class(es) listed in your application across state lines.
Third, the trademark Statement of Use must include a “specimen.” Without going into too much detail, a specimen is typically physical or virtual proof of use.
For example, the following tend to be acceptable specimens for goods:
- sales displays
In contrast, these are great specimens for services:
- marketing material
- business cards or letterhead
From experience, the USPTO prefers websites. However, if you do submit a website, make sure there is a way for the consumer to purchase the goods (e.g., a shopping cart) or order services (e.g., contact page). The next section discusses the fees paid with a Statement of Use.
4. How Much Does It Cost?
A trademark Statement of Use costs $100/Class of goods and/or services. For example, if you filed a trademark application with 1 International Classes, then your Statement of Use fee is $100. If you filed 2 International Classes, then your Statement of Use fee is $200, and so on. The USPTO assesses these fees because you did not initially submit your specimen under your Intent to Use Application. These fees add up quickly if you filed for multiple International Classes.
Accordingly, it is economically beneficial to file for fewer trademark classes and to include a valid specimen, if possible.
5. How Do I File a Trademark Statement of Use?
- Log on to MyUSPTO.gov.
- On the left-hand side where it says “Trademark Form Finder” click “Respond to Notice of Allowance.”
- Click “File Statement of Use (SOU) (may include a request to divide your application).”
- Type in your Serial Number.
- Click continue until you can add dates of first use and use in commerce.
- Upload a specimen.
- Submit your filing by paying the $100/Class Fee.
6. Summary and Recommendation
In conclusion, a trademark Statement of Use is a document that provides proof of use in commerce and a $100 fee/Class. In contrast to Amendment to Allege Use, a Statement of Use is filed within 6 months after the Notice of Allowance issues. The Notice of Allowance issues after the trademark opposition period ends. However, if you need additional time, you may file up to 5 Extensions of Time for a 6-month extension each. A Statement of Use requires a sworn statement about the date of first use in commerce and specimens along with the $100 fee/Class.
Need help filing a Statement of Use or have questions? Feel free to contact Syed Law, and we will take care of your filing.
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