What is a Statement of Use?
An Intent-To-Use (ITU) trademark application does not require any evidence of trademark use at the initial filing. In fact, one of the advantages of an ITU application is that several goods and/or services may be initially identified in the application without providing any specimens or dates of first use (unlike a use-based application). Unless an application is based on a foreign registration, a Statement of Use will be required to show use of the mark with the goods or services identified in the trademark application.
Evidence of use in commerce may be submitted after the ITU initial filing when the applicant has properly and adequately used the trademark on the goods or services identified in the application. This subsequent submission of trademark usage has two different names – “Amendment to Allege Use” or “Statement 0f Use” – depending upon the timing of its filing. For purposes of this post, I will refer to both filings generically as the Statement of Use, or simply SOU.
What is the cost of a Statement of Use?
The USPTO filing fee is $100 per class. My firm charges a flat $500 attorney’s fee per class to file the SOU, so our firm’s total cost for filing an SOU is $600 per class.
How much use is sufficient?
While there are no bright line tests for determining whether the amount of sales or dollars spent would adequately support the filing of an SOU, certain guidelines and examples of inadequate use are helpful:
- the sales should be in the ordinary course of business, and not sporadic or nominal
- trivial or “token use” is insufficient (e.g., single sale or single shipment of product)
- sales to only friends and family might be insufficient
To support an SOU, there must be bona fide use in the ordinary course of trade, which would exclude token use or use made solely to reserve rights in a mark [see TMEP Section 901.02]. Relevant factors for determining bona fide use in the ordinary course of trade include:
- the amount of use;
- the nature or quality of the transaction; and
- what is typical use within a particular industry.
When can the evidence of trademark usage be filed?
An applicant should not file evidence of use unless and until the trademark has been adequately used in commerce for the goods or services covered in the application. The degree of usage sufficient to justify filing the SOU can be tricky to pin down, so it would help to confer with your trademark attorney on current level of usage.
Assuming the trademark has been properly and sufficiently used on the recited goods or service, the evidence may be filed anytime during the application process except for the blackout period which consists of the timeframe between the examiner’s approval of the mark for publication and the Notice of Allowance.
Thus, a submission of use filed before the examining attorney approves the mark for publication is called an Amendment to Allege Use (AAU). If the examiner has approved the mark for publication, then you must wait until a Notice of Allowance is issued which occurs after the publication period ends without opposition from third parties. A submission of use after the Notice of Allowance is called a Statement of Use.
What is required in a Statement of Use?
The filing requirements for a Statement of Use starts with the class or classes covered in the application. For each class of goods or services, the applicant must provide:
- a date of first use in commerce for that class;
- a specimen of use for at least one product or service recited in that class; and
- a confirmation that the mark has been used on all other goods or services recited for that class, or a deletion of any goods or services for which the mark has not been used.
What types of specimens are appropriate?
The type of specimens appropriate for an SOU depend upon whether goods or services are identified in the application. As a general rule, advertising and marketing materials are inappropriate for goods, but acceptable for services. See this post on acceptable specimens of use.
What if the mark is not used on all the goods/services identified in the application?
If the mark is used on some, but not all, the goods/services covered in the application, the applicant may delete the unused goods/services from the application when the SOU is filed. Alternatively, the applicant may file an extension of time or a Request to Divide.
What if more time is needed to file the Statement of Use?
An applicant has six months from the date of the Notice of Allowance to file a Statement of Use. If more time is needed, an applicant may file a 6-month extension of time for filing the SOU. A maximum of five extension requests may be filed, giving the applicant a total of three years from the Notice of Allowance date to file the SOU.
What is the difference between a Statement of Use and an Amendment to Allege Use (AAU)?
The main difference between an SOU and an AAU is in the timing. Prior to the application being approved for publication, an applicant may file an Amendment to Allege Use to submit evidence of trademark usage. A Statement of Use can be filed only after a Notice of Allowance has been issued, which occurs after the publication period ends without opposition.
Another key difference is that an applicant may withdraw an Amendment to Allege Use before approval of the mark for publication [see TMEP 1104.11]. Withdrawal of an AAU provides the applicant with more time to create and use new specimens, which may be handy if the examining attorney rejects all original specimens and the applicant currently has no additional specimens to submit.
In contrast, a Statement of Use may not be withdrawn. If original specimens filed with an SOU are rejected, the applicant must provide substitute specimens that have been in use during the original time period for filing the SOU. In other words, no additional time will be given to a SOU filer to prepare new specimens beyond the existing 6-month period. The one exception is if an insurance extension is timely requested, which will provide an additional 6-month period.
When is the “Blackout Period”?
There is a period of time where an applicant may not submit any evidence of use. This interval of time is known as the “Blackout Period” which is between the approval for publication and the Notice of Allowance date [see TMEP 1104.03(b)]. Therefore, an applicant must file either an Amendment to Allege Use (AAU) before the approval for publication or a Statement of Use after the Notice of Allowance. If an AAU is filed during the Blackout Period, the USPTO will refund the government fee. The applicant will need to wait until the Notice of Allowance issues in order to file a Statement of Use.
Do clinical trials count as trademark use?
No, clinical trials necessary for governmental approval would not be considered a separate registrable service done primarily for the benefit of others.
Need to file a Statement of Use?
Reach out to patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you file a proper Statement of Use with acceptable specimens.
