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GRANT: Have you received a Notice of Allowance?
Is the deadline approaching for your Statement of Use?
Are you unsure what these documents are and what to do
about them?
Well, you've come to the right place.
Over the next few minutes, we'll explain what a Statement
of Use is, why it's necessary, and what you will need to
complete the form.
We'll also discuss what to file if the due date is
approaching and you're not quite ready to submit your
Statement of Use.
Finally, we'll cover what you may be able to do if you
missed your filing deadline.
In order to understand the specifics of the form,
however, we need to take a step back and take a look at a
larger concept: basis.
If you remember the earlier news broadcast about "basis,"
you might remember that the most commonly used filing
basis in the United States is Section 1.
And that there are two options under Section 1: Section 1(a)
and Section 1(b).
Section 1(a) means that you are already using the mark in
commerce and Section 1(b) means that,
although you are not yet using the mark in commerce,
you have a bona fide intent to do so.
If you're unfamiliar with what is meant by "use in commerce,"
think about it this way.
"Use in commerce" means that you have an ongoing business
and actively are offering your goods or services across state
lines or internationally.
For goods, "use in commerce" generally involves selling
your goods across state lines with the mark displayed on the
goods themselves or the packaging for the goods,
like shoes that are made in one state and sold nationwide.
For services, "use in commerce" generally involves
offering a service to customers in another state or
rendering a service that affects interstate commerce,
like restaurants and gas stations and hotels.
And "use in commerce" doesn't have to be just in the United
States: it can involve commerce between you and a
U.S. territory
or a foreign country.
As long as your use of the mark isn't solely within one
state, you've met the requirement.
This is important because in order to move your application
forward to registration, you must be using your
mark in commerce.
That means that if you currently have a Section 1(b)
basis in your application, you must amend it to Section 1(a)
to register your mark.
This is true even if you had used your mark prior to
filing, but nonetheless filed under Section 1(b).
The form used to make this amendment is the Statement of
Use, or "SOU."
It allows you to turn your Section 1(b) application into
a Section 1(a) application, one of the final hurdles to
registration of your mark.
And, after all, that's why you filed the application in the
first place, right?
Now, you might be wondering how you know it's time to file
your Statement of Use.
It's very simple.
You will receive a document called a Notice of Allowance.
It's sometimes called a "NOA" or an "N-O-A."
The Notice of Allowance means that your mark has passed
through the publication phase and may almost
be ready to register.
The only step that remains is proving that you are using
your mark in commerce by filing the Statement of Use.
The document also starts the clock ticking.
You only have six months from the date of the Notice of
Allowance to either submit the Statement of Use or request an
extension of time to file the Statement of Use.
To avoid abandonment, make sure to comply with the six
month deadline.
So, now that you understand why you need to file the
Statement of Use and when you need to file it,
let's discuss the specifics of what you'll encounter
in the online form.
You will be asked to provide the following: the date when
you first used the mark, the date when you first used the
mark in commerce, a signed declaration that you are now
using the mark in commerce for the identified goods and
services, a specimen of use, and the filing fee.
Once you file the Statement of Use,
be aware that registration is not guaranteed.
The USPTO will review the Statement of Use and may find
issues that must be addressed.
For example, the submitted specimen may not show
valid trademark use.
If you've filed a trademark application before or have
watched any of the earlier broadcasts,
you might already know what is meant by a "Specimen of Use."
As a reminder, a "specimen" shows how you use your mark in
commerce in connection with your goods or services.
It could be a label or a hang tag for goods or an
advertisement if you applied for services.
The form requires you to submit your specimen
digitally, so be sure to have a digital photograph or copy
of the specimen in JPEG or PDF format.
If you need more information about specimens or just want a
refresher, be sure to watch the Specimens news broadcast,
which provides examples and explanations of
acceptable submissions.
Now, you might be wondering, "What if I've received the
Notice of Allowance, but I haven't yet used the
mark in commerce?"
Or, "I can't find an acceptable specimen
to submit?"
Well, if that's the case, you can request an Extension of
Time to file the Statement of Use.
To request an extension, use the provided form,
but be sure to keep in mind: the time and circumstances
under which you may file an extension request are limited.
You must file it on or before the date your
Statement of Use is due.
Each extension request only lasts for six months and you
may only file up to five extension requests.
After the first request, you must state your ongoing
efforts to use the mark when requesting any more extensions
and remember there is a filing fee for each request.
The online form provides checkboxes for the most common
types of acceptable ongoing efforts,
such as "product or service research or development,"
"market research," and "promotional activities."
If you miss the filing deadline for the Statement of
Use or the extension requests, the USPTO will consider your
application abandoned.
And, in order to revive it, you must file a Petition to
Revive, generally within two months of the abandonment
date, and pay a petition fee.
You may also have to comply with other requirements.
There is no guarantee you will be able to revive your
application if it goes abandoned,
so keep a close eye on your application status.
For more detailed information about Petitions,
be sure to watch the Petitions news broadcast,
also available on the USPTO website.
When you're ready to file your forms,
use the Trademark Electronic Application System or
TEAS, T-E-A-S.
You may have used TEAS to file your initial application.
There are TEAS forms for both the Statement of Use and the
Request for Extension of Time to File the Statement of Use.
Simply open the "Intent-to-Use" forms page and
select the form that applies to your situation.
The forms include lots of information and helpful links,
so be sure to read them thoroughly before submitting.
And, although you hopefully won't need it,
TEAS can also be used to file a Petition to Revive form.
And those are the basics.
Just remember, in order to register your mark under
Section 1, you must show the USPTO that you have used your
mark in commerce.
So, if you initially filed your application under the
Section 1(b) Intent to Use basis,
you must file a Statement of Use to prove that you're using
the mark in commerce.
Feel free to replay this broadcast at any time and
click on any of the links within the forms
for more information.
And keep an eye out for more of these broadcasts
through the website.
I'm Grant Gainsworth, Trademark Information Network.
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