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.

What Constitutes Sufficient Use in Commerce?

The legal standard for “use in commerce” under the Lanham Act, 15 U.S.C. § 1127, is more demanding than many applicants expect. For goods, the mark must be placed on the goods, their containers, displays associated with the goods, or on tags or labels affixed to the goods, and the goods must be sold or transported in commerce. For services, the mark must be used or displayed in the sale or advertising of the services and the services must be rendered in commerce. A single bona fide transaction may be sufficient to establish use, but courts have held that “token” use—a single sale made purely to preserve trademark rights with no genuine commercial intent—will not qualify. See Zazu Designs v. L’Oreal, S.A., 979 F.2d 499 (7th Cir. 1992).

When preparing the Statement of Use, applicants must attest under oath to specific dates of first use. Erroneous dates—particularly dates that are earlier than actual use—can constitute fraud on the USPTO, which may result in cancellation of the registration even after it issues. See In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009). Applicants should carefully reconstruct their records before completing the sworn statements.

Acceptable Specimens: What Works and What Does Not

The specimen submitted with the Statement of Use must show the trademark as actually used in commerce—not as the applicant intends to use it. For physical goods, acceptable specimens include photographs of the mark on the product itself, on product packaging, or on a retail tag or label. For digital goods and apps, a screenshot showing the mark on the download page or within the app interface may be accepted. What the USPTO routinely rejects: advertising materials that merely promote goods but do not show a contemporaneous point-of-sale context; mock-ups or digitally altered photographs; and specimens dated after the claimed date of first use.

Website screenshots submitted as specimens for goods must show the mark in connection with a means of purchasing the goods—a shopping cart button, an “add to basket” link, or similar call to action. A webpage that merely describes the product without providing a purchase mechanism will not constitute an acceptable specimen for goods, though it may suffice for services.

Extensions of Time and Abandonment

If an applicant is not yet using the mark in commerce when the Notice of Allowance issues, extensions of time may be requested in six-month increments. See 37 C.F.R. § 2.89. The first extension is granted as a matter of right upon payment of the fee. Subsequent extensions (up to a total of 36 months from the Notice of Allowance) require a verified statement that the applicant has a continued bona fide intention to use the mark and a brief explanation of why the mark has not yet been used. Failure to file the Statement of Use or a timely extension request results in automatic abandonment of the application, with loss of the original priority date.

Post-Registration Maintenance: Keeping Your Registration Alive

Filing the Statement of Use is not the end of the compliance timeline. After registration, trademark owners must file a Declaration of Use (Section 8 affidavit) between the fifth and sixth year after registration, confirming continued use of the mark. See 15 U.S.C. § 1058. A combined Section 8/Section 9 filing is required at the ten-year mark to maintain and renew the registration. Failure to make these filings results in cancellation of the registration. Additionally, a Section 15 Declaration of Incontestability may be filed after five years of continuous use following registration, which provides significant additional legal protections against challenges to the mark’s validity.

Work with an Experienced Trademark Attorney

The trademark registration process involves strict deadlines, technical specimen requirements, and sworn statements that carry serious legal consequences if inaccurate. The trademark attorneys at Revision Legal guide clients through every stage of the process—from application strategy through post-registration maintenance. Contact us at 231-714-0100.