The process of applying to register a trademark with the United States Patent and Trademark Office (USPTO) can be a complicated undertaking. Often, trademark owners will encounter terms and steps that may only apply under certain circumstances. The Statement of Use (SOU) is one of these – needed only for applications submitted under a particular filing basis. To learn more about the filing basis and USPTO statement of use requirements, consider scheduling a conversation with an intellectual property attorney experienced in USPTO trademark registrations. Call Sullivan & Carter, LLP at (929) 724-7529 to connect with a member of our team.

What Is the USPTO Statement of Use?

The USPTO offers two filing bases for domestic applications for trademark registration, selected during the application submission process. These two filing bases are:

• Use in commerce
• Intent to use

International applicants for trademark registration under the Madrid Protocol will need to use a separate filing basis specific to United States recognition of foreign trademarks. For domestic applicants, the filing basis that applies in a particular situation will depend on the point in the trademark process at which the application is submitted to the USPTO. Trademark owners must select a filing basis in order to submit an application.

The Use-in-Commerce Filing Basis

A trademark owner may submit their USPTO trademark application on the use in commerce filing basis if the trademark is already in active use in business conducted across state lines (or internationally). Filing a use-in-commerce application puts the submission of specimens showing the mark as it is actually encountered by consumers in the ordinary course of business at the “front” end of the application process, as the company or entrepreneur can simply submit these specimens with the rest of the materials in their original application packet.

The Intent-To-Use Filing Basis

Sometimes an entrepreneur or company development team may wish to begin the process of applying for USPTO trademark registration before the mark is in active use, for instance if the trademark and product testing and development have occurred in tandem and the trademark is ready before the first items are ready to ship. In this instance, the applicant obviously will not be able to submit specimens of use (examples showing the mark as it is actually used in connection with the goods or services listed on the application for trademark registration), since this type of use has not yet taken place.

The trademark owner does not have to wait until the mark is in use to begin the trademark registration process, although actual use will have to be shown before final approval can be granted. In the interim, the business can file the application to register the trademark under the “intent-to-use” filing basis, after which point they will need to submit documentation showing active use within the timeframe specified by the USPTO. In addition to specimens, this documentation must include a statement signed by either the trademark owner or a party (such as an attorney) authorized to act on their behalf, declaring that the mark is now in active use in commerce. This signed declaration is the Statement of Use (SOU).

What Is Use in Commerce?

All USPTO trademark applications will have to demonstrate use in commerce at some point, for two main reasons: First, the federal government only has the authority to regulate trade with foreign countries or between separate states, so proof of use in interstate (or international) commerce serves to confirm that the USPTO has jurisdiction to register the trademark. Relatively few businesses wish to conduct business exclusively within a single state, so this step may seem like a formality – but it is nevertheless an important part of the legal and regulatory process. Second, showing the mark as it is actually used in the “real” world helps the USPTO examiner to evaluate its efficacy in distinguishing a company’s goods or services, as well as one final chance to identify any potential for confusion that might not have been apparent during earlier stages of the application process.

What Are the USPTO Statement of Use Filing Requirements?

If the USPTO examining attorney finds no issues with an application submitted under the intent-to-use filing basis, or if (and once) any concerns raised about the application have been satisfactorily resolved, then the USPTO will issue a Notice of Allowance. The mailing date of this notice of allowance then initiates a six-month period during which the trademark owner must submit either a statement of use or an application to extend the SOU filing deadline. Extension requests require payment of a separate fee for each trademark class listed on the original application, so it is generally a good idea to get the trademark into use and submit the appropriate documentation as soon as possible after receiving the notice of allowance.

In addition to the signed declaration, the SOU must be accompanied by:

• At least one specimen of use that meets USPTO requirements for acceptable specimens
• The filing fee for at least one trademark class listed on the original application

The SOU can only be filed for a conditionally approved application. If your business is moving ahead rapidly (or your trademark registration process encounters delays) and you are able to get the trademark into use in commerce before you receive a notice of allowance, then you may instead submit an “amendment to allege use” form, which contains the same type of signed declaration and, like a statement of use, is accompanied by an appropriate specimen of the mark in commercial use.

Speak With an Experienced Trademark Attorney

Federal trademark registration through the USPTO offers numerous benefits, but the process of submitting a trademark application can be complicated. Many business owners and entrepreneurs prefer to work closely with an experienced intellectual property lawyer to ensure that their documents are submitted appropriately, within the designated timeframes, to reduce the chances of trademark registration refusals or administrative delays. If you think you may be submitting your trademark application on the “intent-to-use” filing basis, you may wish to consider speaking with an experienced trademark attorney to review USPTO statement of use requirements and make sure your statement of use is accompanied by all of the needed documentation. At Sullivan & Carter, LLP, we handle trademark registrations nationwide from our Chicago-based office. Call (929) 724-7529 to schedule a consultation to review your trademark registration needs.