Can You Rescind a Statement of Use for Your Trademark?

Trademark registration often involves multiple steps, especially when your trademark is based on "intent to use" rather than immediate use.

In such cases, after receiving a Notice of Allowance, you'll eventually need to submit a Statement of Use (SOU) to confirm that your trademark is in actual commercial use.

As a trademark applicant, what if circumstances change and you want to rescind this filing?

This article explores:

• Whether you can withdraw a Statement of Use,
• Potential reasons to consider rescission,
• And available alternatives.

What is a Statement of Use, and why is it required?

A Statement of Use is a declaration that your trademark is in commercial use.

This document is required after you receive a Notice of Allowance from the United States Patent and Trademark Office (USPTO) when applying under an "intent-to-use" basis.

By submitting an SOU, you assert that your trademark is actively associated with the goods or services listed in your application.

Failure to file the SOU or obtain an extension results in:

1. Abandonment of the application,
2. Closure of the file,
3. And forfeiture of the application fee.

Can a Statement of Use be rescinded?

Technically, once an SOU is filed, it cannot be withdrawn or “rescinded.”

The USPTO doesn’t provide a mechanism to retract an SOU because this filing asserts that the trademark is currently in use.

However, if circumstances change, there are alternatives and strategies to consider that may offer relief.

Want to learn more about Statement of Uses? Read our detailed article “How to File a Statement of Use for a Trademark: Overcoming Common Challenges and Pitfalls.”

What are the alternatives if you need to withdraw your Statement of Use?

If you have filed an SOU prematurely or need to change your approach, here are some alternatives to consider:

1. Requesting an extension of time to file the SOU

Before filing the SOU, you can request a six-month extension of time if you're not ready to assert use in commerce. Up to five extensions are allowed, providing up to 36 months from the Notice of Allowance to finalize your SOU submission. 

Extensions give you additional time to ensure your trademark is in active use before making the declaration to the USPTO.

2. Abandoning the application

If rescinding the SOU becomes necessary due to changes in your business strategy, another option is to abandon the entire trademark application. To do this, you simply stop responding to USPTO notices or submit a formal request for express abandonment.

This approach clears the application from the record, though fees already paid are non-refundable. Once abandoned, you can reapply for the trademark in the future if needed.

3. Amending the goods or services listed in the application

If the issue lies with the specific goods or services listed rather than the trademark itself, you can submit a new amendment to narrow the scope. 

Reducing the goods and services list to accurately reflect the areas where you use the trademark may be a viable solution. 

However, once the SOU has been filed, this amendment must still align with your current use in commerce.

Key considerations before filing an SOU

Withdrawing an SOU after it's filed isn't a simple task, so it's essential to ensure you're ready to meet its requirements. Before filing, consider the following:

• Confirm active use in commerce: Ensure your trademark is actively associated with the goods or services listed in your application. Examples of "use in commerce" include using the trademark on product packaging, on advertising materials, or in a digital storefront where the products or services are available.
• Utilize extensions wisely: The multiple six-month extensions provided by the USPTO give you ample time to confirm your mark's use before filing. Extensions are relatively low-cost and can save you from the hassle of managing premature SOU filings.
• Seek legal guidance: Trademark filings can be complex, and each situation is unique. Consulting a trademark attorney can help clarify your specific circumstances and guide you through the most appropriate actions.

Plan before you file

While rescinding a Statement of Use isn’t possible once filed, planning carefully and using available alternatives can help you avoid unnecessary complications.

The best approach is to file an SOU only when you are certain of your mark's use in commerce. Should business priorities change after filing, abandoning the application or amending the listed goods and services may offer paths forward.

With diligent planning, you can ensure that your trademark application aligns with your business needs and avoids any unintended missteps in the registration process.