A trademark statement of use, also called an amendment to allege use, is a critically important filing. If it contains inaccuracies, the trademark registration could be canceled. If it does not contain the correct information, it can be rejected and cause significant delays. If you do not submit a timely filed statement, then the application will be deemed abandoned.
As a part of the United States Patent and Trademark Office’s fraud prevention program, the Examining Attorney will scrutinize the trademark statement of use to ensure it meets the requirements. The Examining Attorney will be looking for signs that the Statement of Use is not authentic.
Does every trademark application need a Trademark Statement of Use?
If the initial trademark application is based on “intent-to-use” and not based on a foreign trademark registration, then yes you need to timely file a trademark statement of use.
The filing basis of a trademark application is the legal justification you provide for seeking a federal trademark registration with the United States Patent and Trademark Office (USPTO). You must select at least one basis, and each has unique requirements.
Common Filing Bases:
Use in Commerce (Section 1(a)): This is the most straightforward basis. You claim you’re already using your trademark in commerce (selling goods or providing services associated with the mark). You’ll need to provide proof in the form of a specimen.
Intent-to-Use (Section 1(b)): You have a genuine intention to use your trademark in commerce, but haven’t done so yet. This basis allows you to stake a claim on your mark, but you’ll eventually need to prove actual use with a Statement of Use to get registration.
Foreign Registration (Section 44(e)): This basis is for applicants who already have a registered trademark in another country that has a reciprocal agreement with the US. This allows you to use an earlier filing date from your foreign registration.
Timeframe for Filing a Trademark Statement of Use
If you filed a trademark application based on “intent-to-use,” you must file a trademark Statement of Use within six months of receiving a Notice of Allowance from the USPTO.
A Notice of Allowance is a formal document issued by the United States Patent and Trademark Office (USPTO). It signifies that your trademark application has cleared its hurdles and is approved for registration.
If you file a declaration of use before the Notice of Allowance is granted, it is called an “Amendment to Allege Use.”
Extensions of Time for Trademark Statements of Use
You can request five 6-month extensions of time to file a trademark Statement of Use. Therefore, an applicant has up to 3 years (36 months) to file a trademark Statement of Use after the Notice of Allowance is issued.
The trademark office charges a fee for each extension request.
HOW TO GET A TRADEMARK STATEMENT OF USE EXTENSION
A Request for Extension is filed online using the TEAS system. The extension request will contain two main components:
Verified Statement: A written, signed statement declaring:
You still have a bona fide (genuine) intent to use the trademark in commerce.
Specific reasons for needing additional time.
Fee: A $125 fee per class of goods or services is required with each extension request.
What to Include in Your Trademark Statement of Use for Filing
Essential Components of a Statement of Use
Specimen: A real-world example demonstrating how you’re using your trademark in commerce. Examples include:
- Product labels/tags
- Packaging
- Website screenshots
- Advertisements
Declaration/Signature: A signed statement, under oath, that all information provided is true, and that you are currently using the trademark in commerce with the listed goods/services.
Filing Fee: A fee of $100 per class of goods or services listed in your application.
If your specimen is deficient, you may have an opportunity to submit a substitute verified statement. However, the substitute specimen will need to have been in use prior to the original statement of use filing date.
Do I need to file a trademark Statement of Use?
You can determine the basis of your initial filing by looking it up on Trademark Status & Document Retrieval (TSDR). Enter the trademark application serial number into the status field.
Expand the Goods and Services tab. If the trademark application Basis is 1(b), meaning “intent-to-use,” and you have not filed a statement of use or amendment to allege use, then you need to file a statement of use.
What if You Miss the Deadline?
If you fail to submit a timely filed statement, you may file a Petition to Revive Abandoned Application, but only after the trademark application is deemed abandoned. The trademark application correspondent may receive a notice that the trademark was deemed abandoned.
Further Reading on Statements of Use
https://www.uspto.gov/trademarks/apply/statement-use-sou-minimum-filing-requirements
https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1100d1e826.html
