In this article, readers will learn about the importance and purpose of a trademark statement of use, the requirements to file one, and the key components of a strong statement. The article will guide you through the process of developing a trademark statement, addressing goods and services covered, and expressing the method of use in commerce. Additionally, it will discuss the filing process, documentation requirements, and proper maintenance and updating of the statement of use. Finally, the article will provide advice on handling potential infringements and changes in ownership.

Drafting a strong trademark statement of use

Definition and purpose

A Statement of Use (SOU) is a sworn document filed by the trademark owner to attest that the trademark is currently in use in commerce. It is required by the United States Patent and Trademark Office (USPTO) to maintain a trademark registration. The purpose of the SOU is to demonstrate that the trademark owner is actively using the mark in association with the goods or services identified in the registration. This helps the USPTO ensure that trademarks are not being registered for the sole purpose of claiming ownership and preventing other parties from using them.

The SOU is filed after the USPTO issues a Notice of Allowance for a preparation of trademark application. The applicant has six months to file the SOU from the date of the Notice of Allowance. In case the applicant requires additional time, the applicant can request up to five extensions, each for an additional six months provided that they have a continuing bona fide intention to use the mark in commerce.

When submitting a trademark Statement of Use, the trademark owner must provide evidence that their mark is being used commercially. This can include providing a sample of the goods or services associated with the trademark, such as product packaging, labels, advertisements, or website screenshots.

Types of trademarks

There are several types of trademarks, and different types may require different types of evidence when filing a Statement of Use.

  1. Trademarks: Trademarks are designed to identify and distinguish the goods or services of one party from those of another. They often include words, phrases, symbols, or designs that represent a brand and its associated products or services.
  2. Service marks: Service marks are similar to trademarks but represent services instead of physical goods. Service marks are also used to identify and distinguish a company or provider's services from those of its competitors.
  3. Collective marks: Collective marks are used by groups or organizations to identify their collective membership and to distinguish their goods or services from those of other groups. These marks can also represent a group's standards, quality control, or endorsement of its member's products or services.
  4. Certification marks: Certification marks are used to indicate that a certain product or service meets specific criteria or standards. Such marks are not used to identify one particular brand but instead to signify the quality or standard of a product or service that has been certified.
  5. Trade dress: Trade dress refers to the visual aspects of a product or its packaging, which can include shapes, colors, or designs. A well-known example of trade dress is the distinctive shape of the Coca-Cola bottle. Trade dress can be protected the same way as a traditional trademark if it serves to identify the source of the goods and is distinct from competitors.

Benefits of a strong statement of use

A strong Statement of Use is crucial for the successful registration and continued protection of a trademark. Benefits of a well-crafted SOU include:

  1. Legal Protection: A strong SOU demonstrates to the USPTO that your trademark is actively being used in commerce, which is necessary for attaining registration and maintaining your trademark rights. Registration provides legal protection against infringement, counterfeiting, or unfair competition.
  2. Brand differentiation: An effective SOU helps differentiate your brand and its associated goods or services from those of your competitors. This encourages consumer recognition of your brand, which can lead to increased customer loyalty and sales.
  3. License opportunities: A registered trademark can be licensed to others, allowing you to build your brand and revenue by extending your goods or services to new markets or collaborators.
  4. Increased business value: Owning a registered trademark can increase the overall value of your business, as well as providing a valuable asset in the event of a merger or acquisition.
  5. International protection: A registered U.S. trademark can serve as the basis for registering your mark in other countries, providing protection for your brand in the global marketplace.

In summary, a strong Statement of Use is essential for trademark registration and continued protection. It is crucial to ensure your SOU provides adequate evidence of commercial use and differentiates your brand in the marketplace to enjoy the full range of benefits and legal protections associated with trademark registration.

Requirements for a Trademark Statement of Use

A "Statement of Use" (SOU) is a vital document required by the United States Patent and Trademark Office (USPTO) before it will grant registration to a company's trademark. The Statement of Use verifies that the trademark is in commercial use, demonstrating its effectiveness and relevancy. It also helps distinguish between active trademarks and those that have not yet been used commercially. In this article, we will discuss the requirements for a Trademark Statement of Use, including the legal guidelines and standards, acceptable specimens, and proper use in commerce.

Legal guidelines and standards

One of the primary purposes of a statement of use is to prove that the trademark is being used in association with goods or services in interstate commerce. This means that the goods or services must cross state lines or affect commerce between two or more states. Additionally, the use must be a legitimate, bona fide use in the ordinary course of trade. Simply creating a product or offering a service specifically to establish trademark rights does not qualify as proper use. The applicant must also state that they have the right to use the trademark and that no other party has the right to use a confusingly similar mark for related goods or services.

The SOU must include the following information: - The applicant's name and address - The serial number of the trademark application - A list of the goods or services with which the mark is being used - The date of first use of the mark anywhere in the United States - The date of first use of the mark in commerce between states or with a foreign nation - Specimens demonstrating current use of the trademark

Applicants must submit their Statements of Use within six months after the USPTO issues a Notice of Allowance. If an applicant cannot meet this deadline, they may request a six-month extension, which can be renewed up to five times (for a total of three years following the Notice of Allowance).

Acceptable specimens

The Statement of Use should include specimens that demonstrate the trademark in actual use with the specified goods or services. Proper specimens vary depending on whether the trademark is being used in association with goods or services:

For goods, acceptable specimens include: - Product labels or tags - Packaging displaying the trademark - Photographs showing the trademark on the actual product or its packaging - Promotional materials featuring the trademark in connection with the goods

For services, acceptable specimens include: - Advertisements or promotional materials displaying the trademark and the services offered - Brochures or leaflets showing the trademark in relation to the services - Signage or banners featuring the trademark at the location where the services are offered - Websites displaying the trademark and describing the services

It is essential to provide clear, legible specimens that clearly show the trademark in association with the goods or services claimed in the application. The USPTO may reject specimens that do not meet these standards.

Proper use in commerce

As mentioned earlier, a trademark must be used for bona fide commercial purposes and affect interstate commerce. Additionally, the trademark must be used consistently and continuously in the ordinary course of trade. Inconsistent or sporadic use can weaken the trademark's protection and risk abandonment claims from third parties.

The trademark should be prominently displayed on the goods, packaging, or promotional materials, or in association with the delivery of services. Consistent use in commerce is critical to ensure that the rights associated with the trademark continue to be enforceable and that the mark remains a valid, protectable asset.

In conclusion, understanding the requirements for a Trademark Statement of Use is crucial in securing and maintaining trademark registration. Applicants must adhere to legal guidelines and standards, submit acceptable specimens, and demonstrate proper use in commerce. By doing so, they can protect their intellectual property rights and establish strong, defendable trademarks.

Identifying Key Components of a Strong Statement

A strong statement is essential for effective communication, as it sets the tone for the entire conversation, whether written or spoken. Statements that are clear, concise, and compelling make a positive impact on the reader or listener and convey information efficiently. In this article, we will explore four key components of a strong statement, including distinctiveness, descriptive elements, non-generic wording, and avoiding misleading information.


Distinctiveness is a critical component of a strong statement, as it differentiates the statement from other generic or non-specific statements. To create a distinctive statement, you should focus on emphasizing the unique aspects or characteristics of the subject you are discussing. This may involve using specific details about the subject, such as numbers, examples, or anecdotes that set it apart from others.

Using distinctive language can also make a statement more engaging and memorable. For instance, using vivid adjectives and descriptive phrases can make your statement stand out and capture the audience's attention. In addition, choosing words that evoke emotions or reactions can enhance the impact of your statement.

Descriptive elements

The inclusion of descriptive elements in your statement can greatly improve its effectiveness in conveying information. These elements may include examples, facts, figures, and any other relevant details that help support your point and paint a clear and vivid picture for the audience. By providing concrete and specific information, you are more likely to persuade the reader or listener that your statement is well-founded and accurate.

In order to use descriptive elements effectively in a statement, it is necessary to strike the right balance between providing sufficient information and not overwhelming the audience with too many details. Remember to keep your statement focused and concise by only including relevant descriptive elements that support your primary message.

Non-generic wording

Using non-generic wording in your statement sets it apart from others and makes it more compelling to the audience. Generic or cliché phrases do not convey much meaning and might cause the reader or listener to lose interest quickly. To prevent this, it is essential to use specific, original, and meaningful language that maintains the audience's attention throughout the statement.

One way to avoid generic wording is to use active verbs instead of passive ones, as this conveys more precise meaning and evokes a sense of action. Moreover, steer clear of jargon or buzzwords that might be confusing or overused. Instead, use clear and straightforward language that is easily understood by your target audience.

Avoiding misleading information

A strong statement should always be truthful and accurate. Including misleading information, whether intentional or not, can damage your credibility and weaken the overall impact of the statement. To avoid conveying misleading information, it is essential to verify the accuracy of any facts or figures you include in your statement.

Additionally, be cautious about making unsubstantiated claims or generalizations that cannot be supported by evidence. Instead, focus on presenting documented information and providing context that supports your statement. Not only will this bolster your credibility, but it will also show that you have carefully researched and thought about the topic at hand.

In summary, a strong statement is distinctive, contains descriptive elements, uses non-generic wording, and avoids any misleading information. By focusing on these key components, you can create a compelling and effective statement that captures the attention of your audience and communicates your message clearly and persuasively.

Developing the Text of a Trademark Statement of Use

A Trademark Statement of Use (SOU) is a legal document that confirms the usage of a trademark in commerce. This document is required by the United States Patent and Trademark Office (USPTO) for the registration of a trademark. The SOU must be comprehensive and accurate, so it is essential to develop the text efficiently. This article discusses the best practices to write clear descriptions, address the goods and services covered, express the method of use in commerce, and incorporate essential legal terms.

Writing clear descriptions

When developing the text of an SOU, it is crucial to provide clear and concise descriptions of the trademark, which include the brand name, logo, design elements, and other relevant information about the trademark. The descriptions should be easy to understand for anyone reading it, and should depict the unique characteristics of the trademark and how they distinguish it from others.

To write clear descriptions, consider the following best practices:

  1. Use plain English: Avoid using jargon and complex terminology unless necessary. Keep sentences simple, and use easily-understood words to convey the meaning of the trademark.
  2. Be specific: Include enough detail to distinguish the trademark from similar marks. This may involve describing colors, shapes, patterns, and other distinguishing features.
  3. Organize the information: Break down the description into separate sections for each aspect of the trademark, such as name, logo, tagline, and design elements. Use bullet points or short paragraphs for easy readability.

Addressing goods and services covered

The SOU should clearly address the goods and services for which the trademark is being used. To accomplish this, list all the products and services that are offered under the specific mark. Provide detailed descriptions of each product or service, including the nature, purpose, and function. The descriptions should be comprehensive enough to cover intended expansions or changes in the range of goods and services as well.

To properly address the goods and services covered, follow these best practices:

  1. Categorize products and services: Organize the listed products and services into categories based on their similarities. This helps to provide a clear overview of the trademark's scope.
  2. Use appropriate classification systems: The USPTO uses the International Classification of Goods and Services (Nice Classification) to categorize products and services. Ensure that you classify your list using this system so that your application aligns with USPTO requirements.

Expressing method of use in commerce

In an SOU, it is essential to express the method of use in commerce by demonstrating how the trademark is used for the sale or transport of goods/services. This includes offering the goods/services for sale, displaying the mark in advertisements or brochures, or using the mark on packaging materials.

To convey the method of use in commerce, consider the following:

  1. Provide examples: Include specific examples of the mark being used in commerce, such as photographs of product packaging, promotional materials, or advertisements.
  2. Describe the process: Explain how the mark has been used in connection with selling or transporting the goods/services. Include information about the target market, sale channels, and marketing strategies employed.

Incorporating essential legal terms

When developing the text of an SOU, it is crucial to include essential legal terms that confirm the accuracy and completeness of provided information, and express the applicant's responsibility to maintain the trademark's validity.

Some legal terms to incorporate in an SOU include:

  1. Declaration of use: A statement affirming that the mark is in use in commerce on or in connection with the identified goods/services.
  2. Specimen: A physical representation of how the mark is actually used in commerce, such as photographs, brochures, or other promotional materials.
  3. Verification: A statement verifying that all enclosed information is accurate and complete to the best of the applicant's knowledge.
  4. Oath or declaration: A signed declaration by the applicant, acknowledging their responsibility to maintain the validity of the trademark and to promptly make corrections if errors are discovered.

By following these best practices, you can develop a comprehensive and accurate Trademark Statement of Use that satisfies the USPTO requirements and increases your chances of successfully registering your trademark.

Submitting a Trademark Statement of Use

Submitting a Trademark Statement of Use (SOU) is an essential step in the process of registering a trademark with the United States Patent and Trademark Office (USPTO). A Statement of Use demonstrates the actual use of your trademark in commerce and allows you to maintain the rights and protections that registration provides. Below you'll find information about the filing process, fees, and required documentation, as well as tips for ensuring a successful submission.

Filing process and deadlines

The SOU filing process is a crucial part of the trademark application process for applicants who originally filed an "intent to use" (ITU) trademark application. You must submit an SOU for each class of goods and services included in your ITU application. Failure to do so can result in the abandonment of your application, which could lead to a loss of rights associated with your trademark.

Once you've received a Notice of Allowance (NOA) from the USPTO, you have six months to submit your Statement of Use. If you need more time, you can file for extension requests in six-month increments, up to a maximum of five additional extensions (totaling three years from the date of your NOA).

To submit a Statement of Use, you must follow these steps: 1. Make sure your trademark is being used in commerce. This means that your trademark must be visibly displayed on your products or services, and these products or services must be available for purchase. 2. Obtain a specimen of the usage of your trademark. This could be a photograph, screenshot, or product label showing the trademark in use. 3. File the Statement of Use online via the USPTO's Trademark Electronic Application System (TEAS). You will need to provide information about your trademark, the goods and services it's being used for, and the date of first use in commerce, along with the specimen of use. 4. Pay the required fees, which vary depending on the type of submission and the number of classes you are filing the SOU for.

Fees and required documentation

The fees for filing a Statement of Use depend on the type of form you use. The USPTO provides three types of electronic forms: TEAS Plus, TEAS Reduced Fee (TEAS RF), and TEAS Regular. For SOU submissions, the current fees are: - TEAS Plus submission: $225 per class - TEAS RF submission: $275 per class - TEAS Regular submission: $400 per class

Along with the filing fee, you will need to provide the following documentation and information: 1. The ITU application serial number associated with your trademark. 2. The date of first use of your trademark in commerce, including the use of the mark in connection with at least one item in each class listed in your application. 3. A specimen that shows how your trademark is being used in commerce for each class of goods or services. Examples include product packaging, labels, or promotional materials displaying your trademark.

Tips for a successful filing

To ensure the success of your Statement of Use filing, consider the following tips: 1. Double-check the accuracy of your submission information to avoid any errors or delays. Mistakes in your filing could result in your application being denied or delayed. 2. Use clear, high-quality specimens that accurately show the use of your trademark in commerce. Blurry or unprofessional images may lead to the rejection of your SOU filing. 3. Keep track of your deadlines and file extension requests if needed. Always be proactive in managing and monitoring the status of your trademark application. 4. Consult with a trademark attorney if you're unsure about any aspect of the filing process. They can provide valuable guidance and insight to ensure the success of your Statement of Use submission and the overall trademark registration process.

Maintaining and Updating the Trademark Statement of Use

A trademark Statement of Use (SOU) is a legally mandated declaration submitted to the United States Patent and Trademark Office (USPTO) confirming the active use of a trademark in commerce. Properly maintaining and updating your SOU is essential for safeguarding your trademark rights. This article will discuss the various steps and requirements necessary to ensure your trademark remains in good standing with the USPTO, including periodic filing necessities, handling changes, and dealing with potential infringements.

Periodic filing requirements

Once a trademark application is approved and registered, trademark owners must stay vigilant in meeting specific filing deadlines to maintain their trademark's legal protection. The following are essential periodic filings that should not be overlooked:

  1. Declaration of Use or Excusable Nonuse (Section 8): Trademark owners must file a Section 8 declaration between the fifth and sixth years after the trademark registration date. This declaration asserts that the trademark is still in use in commerce or provides valid reasons for its nonuse. Failure to submit this declaration will result in the cancellation of your trademark registration.
  2. Renewal Application (Section 9): A renewal application must be filed every ten years from the registration date to maintain the trademark's protection. It is also necessary to submit a concurrent Section 8 declaration to confirm the mark's use in commerce. The renewal application and declaration must both be filed within the one-year window before the registration's expiration.
  3. Affidavit of Incontestability (Section 15): After continuous use of the trademark for five years from the registration date, owners can strengthen their legal rights by filing a Section 15 affidavit. This incontestability status makes it more difficult for third parties to challenge the trademark's validity. Although not a mandatory requirement, its benefits make it a crucial filing to consider.

Make sure to mark the appropriate filing deadlines on your calendar to avoid losing your valuable trademark rights.

Handling changes in goods, services, or ownership

Trademark owners must notify the USPTO whenever there are alterations in the mark's associated goods and services, or a change in ownership. Here's how to handle each situation:

  1. Change in Goods or Services: If you need to expand or modify the list of goods and services associated with your trademark, file a new trademark application that reflects the updated information. Conversely, if you want to remove certain goods or services, submit a voluntary amendment to the registration.
  2. Change in Ownership: When a trademark changes ownership (either due to an assignment, merger, or company name change), it's essential to record the transfer with the USPTO through the Assignment Recordation Branch. Properly documenting changes in ownership ensures the trademark's status remains enforceable and up-to-date.

Dealing with potential infringements

It is the trademark owner's responsibility to monitor for potential infringements and take appropriate action to deter and resolve such situations. Consider the following steps in addressing possible trademark infringements:

  1. Monitoring: Regularly conduct trademark searches to identify potentially infringing trademark applications or use of similar marks in commerce. Use-customized monitoring services, if necessary, to receive notifications about potentially infringing activities.
  2. Cease and Desist Letters: If you detect a possible infringement, start by sending a cease and desist letter to the allegedly infringing party to request immediate discontinuation of their use of your trademark. In many cases, a strongly-worded letter from the trademark owner or their attorney may resolve the issue without resorting to litigation.
  3. Litigation: If the alleged infringer refuses to comply with your demand, consider initiating a trademark infringement lawsuit as your last resort. Consult with an experienced trademark attorney to evaluate the merits of your case and devise a litigation strategy to protect and enforce your trademark rights.

1. What is a trademark statement of use, and why is it important?

A trademark statement of use is a legally required declaration filed with the United States Patent and Trademark Office (USPTO). It confirms that you are using your trademark in commerce, which is essential to maintain your trademark rights and protect your brand from potential infringement.

2. What elements should be included in a strong trademark statement of use?

A strong trademark statement of use includes a verified statement confirming the trademark's use in commerce, the date of first use, and the goods and services with the mark. Additionally, adequate specimens demonstrating the trademark's use, such as product packaging or website screenshots, should be submitted.

3. What are the deadlines to file a statement of use?

A statement of use should be filed within six months from the Notice of Allowance issue date. Applicants can request extensions of time, but the filing cannot exceed 36 months from the Notice of Allowance. Failure to meet these deadlines may result in abandoning the trademark application.

4. Can the statement of use be amended after submission?

Yes, amendments to the statement of use may be permitted under limited circumstances. The amendments must not materially alter the mark or the identification of the goods and services. Rectification of minor errors or updates to the specimen may be acceptable.

5. What happens if the statement of use is rejected or found insufficient?

If the statement of use is rejected or found insufficient, the USPTO will issue an Office Action detailing the issues. Applicants have six months from the Office Action date to correct the deficiencies or provide a suitable explanation. Failure to respond within the allotted time may result in abandoning the application.

6. How can an attorney help with drafting a strong trademark statement of use?

An attorney can provide guidance on gathering the required information, drafting clear and accurate statements, and submitting appropriate specimens. They can also ensure compliance with USPTO requirements and deadlines, thereby increasing the likelihood of a successful trademark registration.