TRADEMARK STATEMENT OF USE

After a Notice of Allowance is issued on a trademark application and the 30-Day Opposition period has passed without opposition from a third-party, a trademark may be registered. For certain applications, before the final registration stage can occur, a Statement of Use must be filed. A statement of use or allegation of use must be filed in all trademark applications in which a use basis was not specified, e.g. intent to use application. An allegation of use is filed prior to allowance, while a statement of use is filed after a Notice of Allowance has been issued.


STATEMENT OF USE REQUIREMENTS

(1) a verified statement that:

  • the applicant is believed to be the owner of the mark

  • the mark is in use in commerce on ALL goods specified in the trademark application

  • the dates of first use of the mark anywhere and first use of the mark in commerce, and

  • setting forth or incorporating by reference those goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce;

(2) one specimen per class of the mark as used in commerce;

(3) the prescribed fee for each class;

(4) within 6 months, however if the applicant is not yet using the mark in commerce an extenstion request may be filed every six (6) months until the statement of use is filed.  The applicant may file a total of five (5) extension requests.  WARNING: An SOU may not be filed more than thirty-six (36) months from when the NOA issued.  The deadline for filing is always calculated from the issue date of the Notice of Allowance.


YOUR QUESTIONS…

1.    What is “use in commerce”

2.    What if I’m only using the trademark in one state?

3.    I sell online. Can I get a federal trademark registration?

4.    How do I chose a specimen?

OUR ANSWERS…

  1. In order to register a federal trademark, there must be use in commerce. The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  A mark is deemed to be in use in commerce--

    (1) on goods when

    (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

    (B) the goods are sold or transported in commerce, and

    (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

  2. Intrastate use of a mark may qualify as use in commerce within the meaning of the Act if the intrastate use is of a type that would, taken in the aggregate, have a direct effect on interstate commerce. Examples include hotels, restaurant services and services offered on the internet.

  3. Products and services offered on line are interstate commerce and qualify for federal trademark protection.

  4. Click here to find a list of acceptable trademark specimens. All trademark specimens must:

  • show the trademark exactly how it appears on the trademark application

  • must be attached to a product directly, via labeling, or packaging, or shown in connection with a service identified in the trademark application

  • submitted in digital format (.jpg, .pdf) for design and word trademarks