What is a Trademark “Statement of Use”?

If you applied for a trademark as an “intent to use” mark with the USPTO, you may have received a “Notice of Allowance”– and that’s great news! But now, to actually complete the registration process, you must file what is known as a “Statement of Use.” What is a statement of use, and when must you file it with the USPTO?

What is a Trademark Statement of Use?

A trademark statement of use is a formal declaration made by an applicant to the United States Patent and Trademark Office (USPTO) stating that they are using their trademark in commerce and that all information provided in the trademark application is accurate. A statement of use is typically required when an applicant files an “intent to use” (ITU) trademark application, which is an application for a trademark that is not yet being used in commerce.

To file a statement of use, an applicant must provide the USPTO with evidence that they are using their trademark in commerce. This typically involves submitting a specimen. Specimens are an example of how the trademark is being used in connection with the goods or services described in the application. Specimens might show the trademark on the product, on packaging, at the checkout page of a website, or on other advertising material. The specimen should show the trademark as it is actually being used in commerce, not how it may be used in the future.

When Must I file a Statement of Use?

A trademark applicant must file a statement of use within a certain time frame or the application will expire/ be cancelled. This is typically six months after the USPTO issues the Notice of Allowance. The applicant may file up to five “extensions” of six months each for an additional fee. If the applicant is unable to file a statement of use within this time frame, the application will be considered abandoned, and will be cancelled.

How Do I File a Statement of Use?

The USPTO provides an online filing system called the Trademark Electronic Application System (TEAS) that allows you to file your statement of use electronically. To file online, you will need to create a TEAS account, verify your identity, complete the required Statement of Use form, upload your required specimens, and pay the associated fees. Fees can be paid online through the TEAS system using a credit card or electronic check. Filing fees apply on a per-Class basis.

What Happens If My Filing or Specimen is Not Accepted?

If your Statement of Use is rejected for any reason, (typically specimen-related) you will receive an Office Action. Failure to respond or failure to correct the issues noted in the Office Action means your trademark application will be cancelled. That’s a big let down, because you’re so close to registration!

The good news is that an experienced trademark attorney can typically correct most issues in an Office Action against a Statement of Use– so call us for help!

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