A “Trademark Statement of Use” is a legal document that provides sworn proof that a given trademark is being used in interstate commerce on the products or services with which the trademark is associated. More specifically, a Trademark Statement of Use is used with “intent-to-use” applications for federal trademark registration. If you have questions about trademarks or trademark statements of use, call us here at Revision Legal. We are top-rated and proven Trademark Lawyers. For a consultation, call us at 231-714-0100 or 855-473-8474. Here are a few things to know about Trademark Statements of Use.

Use Requirements for Trademarks

To have a legally valid trademark registration in the United States, the trademark MUST be used in interstate commerce. This is a legal requirement, and without use in interstate commerce, a trademark registration is invalid. Indeed, a trademark is not legally valid under common law rules if the trademark is not being used. From this legal requirement, any request for a trademark registration must be accompanied by proof of use.

Federal trademark registration is handled by the U.S. Patent and Trademark Office (“USPTO”). Under current federal trademark laws, there are two types of trademark registration applications. We will call them “currently-being-used” applications and “intent-to-use” applications. The former is an application to register a trademark already being used in interstate commerce. In that type of application, the applicant must provide proof of the current (and past) use of the trademark.

By contrast, an intent-to-use application involves a new trademark that is not currently being used. The owner of the proposed trademark asserts that it plans to begin using the trademark “sometime soon.” In effect, the owner is asking for a temporary, provisional, and conditional registration of their proposed trademark. However, for the provisional trademark registration to “ripen,” the owner must begin to use the trademark in interstate commerce. Put another way, the USPTO will approve the new trademark, but on the condition that the owner begins to use the trademark. To prove this use, the owner must file a formal document with the USPTO called a Trademark Statement of Use (USPTO Form 1553 “Allegation of Use”). The USPTO’s approval is temporary because use must begin, and Form 1553 must be filed, within six months of approval. Failure to begin the use of the new trademark or to begin use within the deadline will nullify the USPTO’s approval. (It should be noted that an owner can request up to five extensions of the six-month deadline.)

Fees, Procedures, and Key Requirements

Currently, most documents filed with the USPTO must be filed electronically. The USPTO fees are currently $100 for each Statement of Use that must be filed. A separate Statement of Use must be filed for each class of goods or services with which the trademark is registered. All trademarks must be registered with at least one class of goods or services, and it is permissible and common for trademarks to be registered with multiple trademark classes. Examples of different classes include t-shirts, coffee mugs, kitchen appliances, automobiles, written materials, music, etc.

The key requirement of any Statement of Use is the provision of the proper specimens of use. With a physical product, examples include

• Photos or other evidence of the trademark actually affixed to the product
• Use of the trademark on labels, packaging, tags, instruction booklets, and more
• Evidence of trademark use on point-of-sale displays
• Use of trademark in marketing materials and on websites
• And more

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.

Extensions of Time to File a Statement of Use

When an intent-to-use application receives a Notice of Allowance from the USPTO, the applicant has six months to either file a Statement of Use (USPTO Form 1553) or file a Request for Extension of Time (USPTO Form 1581). The extension request requires a verified statement that the applicant has a continued bona fide intention to use the mark in commerce. The USPTO grants the first extension as a matter of right. Up to four additional extensions — for a total of five — may be granted, each requiring a showing of good cause. This gives an intent-to-use applicant up to three years from the Notice of Allowance date to commence use.

If the applicant fails to timely file either a Statement of Use or an Extension Request, the application will be abandoned. Abandoned applications cannot be revived unless the abandonment was unintentional, and the applicant files a petition to revive within two months of the abandonment notice. Losing a filing date on an intent-to-use application means losing the constructive use priority date established by the original filing.

What Constitutes a Valid Specimen of Use

The specimen submitted with a Statement of Use must show the mark as actually used in commerce with the specific goods or services identified in the application.

Specimens for Goods

For goods, acceptable specimens include labels affixed to the product, hang tags, product packaging showing the mark, and photographs of the mark displayed on the goods themselves. Website screenshots are acceptable only if the page includes a means for purchasing the goods — a shopping cart or add-to-cart button. Specimens that show only decorative use of the mark are often refused because they do not show trademark use.

Specimens for Services

For services, acceptable specimens include website screenshots showing the mark in connection with a description of the services and a means of contacting the service provider, business cards and letterhead used in rendering services, brochures describing the services, and advertisements referencing the mark in connection with the services.

The Allegation of Use vs. Statement of Use: Timing Matters

An Allegation of Use filed before the USPTO issues a Notice of Allowance is sometimes called an Amendment to Allege Use (AAU). A Statement of Use (SOU) is filed after the Notice of Allowance. An AAU cannot be filed during the statutory blackout period, which runs from the date a mark is approved for publication until the Notice of Allowance is issued. Filing during the blackout period will result in the document being returned unfiled.

Multi-Class Applications and Separate Statement Requirements

Many trademark applications cover multiple classes of goods and services. Separate use evidence must be submitted for each class. A single specimen showing use on clothing will not satisfy the use requirement for retail store services. If the mark has been put into use in one class but not yet in another, the applicant must file a Statement of Use for the class where use has begun and an Extension Request for the class where use has not yet begun. Failure to do so correctly can result in abandonment of one or more classes.

Errors in specimen selection, class identification, or timing can derail a trademark application that has already invested significant time and expense. The Trademark Attorneys at Revision Legal have helped hundreds of clients successfully navigate the Statement of Use process. If you have received a Notice of Allowance or are approaching the deadline for a Statement of Use, contact us immediately at (855) 473-8474.