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trademark declaration of use, image by Tom Bayly

What is a USPTO Trademark Declaration of Use (and How is it Different From a Trademark Statement of Use)?

By John DiGiacomo

We wrote an article recently discussing a Trademark Statement of Use, which included discussions of the purpose and legal requirements of a Statement of Use. In this article, the top-rated Trademark Lawyers at Revision Legal discuss a different trademark form called a Trademark Declaration of Use. If you have been searching for the “best Trademark Law Firm near me,” give Revision Legal a call at 231-714-0100 or 855-473-8474.

A Statement of Use and a Declaration of Use are both required forms that must be completed and filed with the United States Patent and Trademark Office (“USPTO”). However, the forms are different and are filed at very different stages in the trademarking process. A Statement of Use is filed at the very beginning. If an application is based on at-that-time-current usage of the trademark, then a Statement of Use is filed as part of the USPTO trademark registration application. If an intent-to-use trademark application is filed, then a Statement of Use must be filed within about six months of the USPTO issuing a Notice of Allowance for the proposed trademark.

By contrast, a Declaration of Use is completed and filed years after a trademark has been registered with the USPTO. Indeed, Declarations of Use must be filed on an ongoing basis. The first Declaration of Use must be filed between the fifth and sixth anniversary of the trademark’s registration. Then, subsequent Declarations of Use must be filed every ten years. A Declaration of Use is the key document that must be filed to keep a trademark registration valid.

In explanation, the legal validity of a trademark is based on the use of the trademark in commerce. “Use” means placing the trademark on the product, on the packaging, on materials included with the product, etc. For trademarks involving services, “use” means placing the trademark on advertising, on signage where the services are provided, on websites, etc. Failure to use a trademark will cause the trademark to lapse in terms of legal protections and the ability to register — or maintain the registration — of the trademark. In other words, without use, the trademark is not a trademark, has no legal protection, and cannot be registered.

This, then, is the purpose of a Declaration of Use — to provide evidence to the USPTO that a trademark has been used in commerce during the previous years. The evidence is legally required for trademark registration to be renewed by the USPTO.

Note that trademarks are registered with certain classes of goods and services. Thus, proof of use must be provided for all classes of goods/services with which a trademark is registered. When filing a Declaration of Use, a fee must be paid to the USPTO. In addition, a Declaration of Use must include a verified statement that the trademark has been (and is) being used in commerce and at least one “specimen of use” of the trademark per class of goods/services. An example would be a photograph of the trademark on the product.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

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