How to File a Statement of Use for a Trademark: Overcoming Common Challenges and Pitfalls

Filing a Statement of Use (SOU) is required to finalize a trademark on an "Intent-to-Use" basis.

This filing tells the United States Patent and Trademark Office (USPTO) that your trademark is now in active use for the goods or services listed in your application.

Want to learn more? Below is a step-by-step guide on how to file a Statement of Use and secure your trademark registration.

Step 1: Understanding the purpose of a Statement of Use

The Statement of Use confirms that your trademark is in use commercially. It's an essential requirement by the USPTO for the following reasons:

• Proof of active use: The Trademark Office mandates that trademarks be actively used in commerce to qualify for federal protection.
• Intent-to-use applications only: This filing is only required for marks filed on an "Intent-to-Use" basis in the trademark application process. This means the mark was not in use at the time of application but intended for future use.
• Legal requirement: Filing the SOU ensures compliance with U.S. trademark law. Without it, your trademark can't proceed to complete registration.

Tip: A Statement of Use won't be necessary if you filed your trademark application on an "Actual Use" basis, meaning you were already using the mark in commerce when filing.

Step 2: Preparing to file: Timing and eligibility

The SOU can be filed only after receiving a Notice of Allowance (NOA) from the Trademark Office.

The NOA signifies that your trademark has passed the examination stage and that your mark will be registered once the SOU is filed and accepted. 

Here are the key timing details:

• SOU deadline: You have six months from the date of the NOA to file your SOU.
• Extension requests available: If you need more time to begin using your trademark, you can file for a Request for Extension of Time to File a Statement of Use. This gives you an additional six months. 

Up to five extensions (a total of 36 months from the NOA date) are available. Despite a previously granted extension period, each requires a fee and formal request.

Note: Failing to file your SOU or request an extension within the initial six-month period will result in the abandonment of your trademark application.

Step 3: Gather the required information and documentation

To file the SOU, you'll need specific information and evidence of use, including:

• Specimen of Use: The USPTO requires a specimen demonstrating your trademark in real-world use for the goods/services you've listed. This can vary based on your product or service type:

Goods: The specimen could be a label, tag, packaging, or the product itself, as long as it prominently displays the trademark. Examples include:

1. Clothing tags with the trademark.
2. Product packaging (such as a box or label).
3. Direct photographs of the product showing the mark.

Services: Acceptable specimens for service marks often include advertisements, brochures, website pages, or signage where the mark is used in the context of the service provided.

Tip: Ensure your specimen directly relates to the goods or services listed in your trademark application. Using a mark on promotional items unrelated to your listed goods or services (like a pen or calendar) may not be accepted as evidence.

• First-Use Dates: You must provide the dates your mark was:

1. First used anywhere: The first time you used the trademark in any way.
2. First used in commerce: The first time the mark was used in interstate or international commerce, which is the key criterion for trademark registration.

Step 4: Filing the Statement of Use through Trademarkia

Once you've gathered the necessary documents and information, Trademarkia can assist you in filing your Statement of Use (SOU) with the USPTO on the Trademark Electronic Application System (TEAS). 

Here's how the process works with Trademarkia:

• Start your filing: Begin by providing Trademarkia with your application details, including your intent-to-use information, specimen, and first-use dates.
• Trademarkia completes the form: Trademarkia's experts will handle all aspects of the SOU form, ensuring accurate entry of your first-use dates, a detailed description of the specimen, and proper attachment of your image files in accepted formats (e.g., JPEG or PDF).
• Accuracy and compliance check: Trademarkia will carefully review all details to avoid any errors that could delay processing or lead to SOU rejection.
• Submit filing fee: Trademarkia will guide you through submitting the required fees based on the number of classes associated with your trademark application.

Pro tip: Working with Trademarkia can streamline the process and reduce errors, helping to ensure a smooth filing experience and faster processing times.

Step 5: Submitting and awaiting USPTO review

After submission, the USPTO will examine your SOU to confirm compliance with all requirements. Here's what to expect:

• Processing time: This review typically takes weeks to months, depending on USPTO workload.
• Potential Office Actions: If the USPTO finds any issues, they'll issue an Office Action, which is a formal notice detailing any concerns or deficiencies.

At Trademarkia we can help you with much more than just your Statement of Use. Learn about all we can do in our article “An Overview of Trademark Services.”

Step 6: Responding to an Office Action (if issued)

If you receive an Office Action, don't panic! 

It's common and simply means that the USPTO found something in your SOU that needs clarification or correction (Don’t worry, it doesn’t mean that it’s a case of trademark infringement). 

Here's how to handle it:

• Read the Office Action carefully: It'll explain why the SOU wasn't accepted. Common reasons include issues with the specimen or discrepancies in use dates.
• Take corrective action: Follow the instructions in the Office Action to correct the issues. This could mean providing a different specimen, correcting dates, or adding additional documentation.
• Submit a timely response: You typically have six months to respond to an Office Action. Failing to respond within this timeframe could result in the abandonment of your application.

Note: If you're unsure how to address the Office Action, consider consulting a trademark attorney at Trademarkia for guidance on complex issues.

Step 7: Receiving approval and final trademark registration

If the USPTO accepts your SOU without issues, congratulations! Your trademark will proceed to full registration. Here's what happens next:

• Registration certificate: Once approved, the USPTO will issue a registration certificate for your trademark. This document is your official proof of federal registration and provides nationwide protection for your trademark.
• Maintenance requirements: To maintain your trademark, remember to file periodic renewals (such as the Section 8 Declaration of Use) at the five- and ten-year marks, along with other maintenance filings to keep your registration active.

Common mistakes to avoid when filing a Statement of Use

1. Inaccurate or unrelated specimens: The USPTO can be strict about acceptable specimens. Ensure your specimen clearly displays the trademark on the goods or services listed in your application.
2. Incorrect use dates: Ensure that the dates you provide for first use are accurate, as errors here can lead to rejections.
3. Missed deadlines: Keep track of deadlines for both the SOU filing and any extension request. Missing these deadlines without action could lead to abandonment.

Complete your Statement of Use with Trademarkia

Filing a Statement of Use is crucial in securing full federal protection for your trademark, but it can also be complex and time-sensitive.

Working with Trademarkia simplifies this trademark protection process by guiding you through every step—from gathering the right documentation to responding to potential Office Actions.

With Trademarkia's expertise, you can:

• Avoid common filing errors,
• Meet all USPTO requirements,
• And ensure that your trademark is properly positioned for final registration.

Trust Trademarkia to help you secure your brand, protect your assets, and easily navigate the trademark registration process.