When a person or business seeks to register a trademark, an application for registration must be filed with the US Trademark Office. There are two types of applications that can be filed depending on whether the trademark is being used in commerce at the time of the application. If the trademark is being used at the time, then an “in-use” application is filed; otherwise, the applicant files an “intent-to-use” application.
However, even with an intent-to-use application, at some point, the applicant must still demonstrate that the trademark is being used in commerce. Trademark rights depend on use; if there is no use of the mark, then there is no trademark and the Trademark Office will deny registration. When an intent-to-use application is filed, it is expected that use of the trademark will begin soon after the application is filed. And, indeed, the applicant must demonstrate that use has begun before registration can be finalized. This is the purpose of filing an official form called a “Statement of Use” (“SOU”).
The SOU form is not filed with the original application, but must be filed within six months of the applicant receiving a Notice of Allowance from the Trademark Office. If issued, a Notice of Allowance might arrive about seven to nine months after the original application date. In general, an intent-to-use application is processed in the same manner as an in-use application. About two to four months after the application is received, an Examining Attorney is assigned to the application. The Examining Attorney processes the application by verifying that the application is complete, that the trademark meets all the legal requirements for being a trademark and for registration and by confirming that the trademark does not conflict with any trademark already registered. If this phase in the process is completed successfully, then the Examiner will have the trademark published in the Official Gazette. The Official Gazette is where the Trademark Office publishes trademark and service marks that are proposed for registration. The purpose of publication is to allow third parties to object to registration. If an objection is received, then further proceedings are required.
However, if no objections are received, then the application moves into its final phase. With an intent-to-use application, the final phase is issuing the Notice of Allowance to the applicant and the applicant filing its SOU. As noted, the SOU must be filed within six months of receipt of the Notice of Allowance. Extensions of time may be sought in six month increments for up to 36 months. However, failure to file the SOU or for an extension will lead the Trademark Office to deem the application abandoned.
To complete the SOU, the proper fee must be paid and the following information must be provided:
- Information on the applicant
- Date the trademark or service mark was first used
- Date the trademark was first used in commerce (if different from the date of first use) — for the Trademark Office, “commerce” means interstate commerce
- Sworn statement
- Specimen showing use of the trademark for each category/class of goods with which the trademark is sought to be registered — an example of a specimen would be a photo of the trademark as it is actually used on packaging, advertising material or on a website
If filed electronically, the fee is $100 per category/class of goods or services.
Once filed, the SOU will be reviewed by the Examining Attorney. If approved, then the application will be deemed successful. A Certificate of Registration typically issues within a couple of months.
If you need help with filing a Statement of Use or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.
