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When to file a Statement of Use trademark application

In this article, we will explore the concept of a Statement of Use and intent of trademarks (SOU), including its definition, importance, and related legal amendments and provisions. We'll guide you on how to prepare for filing an SOU, from understanding the eligibility criteria to identifying necessary information and crafting a well-rounded statement. We'll then navigate the circumstances under which to file an SOU, how to navigate the United States Patent and Trademark Office's (USPTO) online filing system, and understanding the verification and confirmation of submission. We'll also delve into the risks associated with late filing and the common mistakes to avoid during this process. Our aim is to provide a comprehensive guide that helps ensure the protection of your trademark rights within the parameters set by USPTO.

When to file a Statement of Use trademark application

Definition of Statement of Use

A Statement of Use (SOU) refers to a formal declaration that a business files with the United States Patent and Trademark Office (USPTO). It effectively certifies that the business is actively using its trademark in commerce within a specified class of goods or services. The filing of this statement provides pertinent information about the use of the trademark, including the date of first use and a description of the goods or services associated with the trademark.

Importance of Statement of Use

The Statement of Use is essential because it proves to the USPTO and the general public that a trademark is in active commercial use. Trademark rights in the United States are legally based on use and not mere registration. Hence, a filed SOU demonstrates that the trademark meets the usage requirement, contributing to a stronger trademark claim. Furthermore, it helps to avoid trademark abandonment, which can occur if a mark is not used for a consecutive period of three years.

Legal Amendments and Provisions Related to Statement of Use

Over the years, several amendments and provisions have been incorporated in intellectual property law concerning the Statement of Use. For instance, there is a provision on filing deadlines, which requires a business to file an SOU within six months of receiving a Notice of Allowance (NOA) from USPTO. An extension can be sought, granted in six-month increments for up to three years.

Preparation for Filing a Statement of Use

Understanding the Eligibility Criteria

To file an SOU, a trademark applicant must have an active Intent-to-Use (ITU) trademark application. The applicant should have received a Notice of Allowance, but they should not have converted their ITU application to a Use in Commerce application. If these conditions are met, and the mark has been used commercially in the United States, the applicant is eligible to file an SOU.

Identifying the Necessary Information and Documentation

An applicant must correctly prepare and present essential information when filing an SOU. This information includes a sworn statement of use, the date of first use, the date of first use in commerce, and an example of commercial use, among others. Proper documentation aids in the successful filing of an SOU.

Crafting a Proper Statement of Use

The statement of use should be composed with care and accuracy, ensuring it provides clear details on how the trademark is used commercially. The statement should typically include information about the categories of goods or services where the mark is used and details about the regions where the mark is in use. It is crucial to provide valid and compelling proof of use, such as product labels or website screenshots.

When to File Statement of Use

After Notice of Allowance

An SOU is filed after the USPTO grants a Notice of Allowance in response to an ITU application. The Notice of Allowance indicates that the applied-for-mark has passed opposition, and the USPTO is prepared to register the mark upon receipt of evidence of its use in commerce.

Determining the Appropriate Timeline

Typically, an SOU needs to be filed within six months after receiving the Notice of Allowance. However, if the applicant cannot provide proof of commercial use within this period, they can request an extension. These extensions can be demanded in six-month increments for a maximum of three years from the Notice of Allowance's issuance date.

Before Extension Requests

Applicants are encouraged to file an SOU before requesting an extension. As the USPTO fees associated with extension requests can accumulate over time, filing an SOU as soon as the trademark is used in commerce can simplify and speed up the registration process, saving time and money.

Filing Process

Navigating the USPTO's Online Filing System

The USPTO has an online filing system called the Trademark Electronic Application System (TEAS), which facilitates efficient filing of SOU. Applicants must properly navigate this system, familiarizing themselves with related features and requirements. It's essential to ensure you correctly enter all necessary information and attach appropriate specimen images to validate your claim of use.

How to Submit the Statement of Use

To submit the SOU, the applicant should complete the 'Allegation of Use' form on TEAS. After entering the required information, the applicant must pay the filing fee (per class of goods/services). The next step is to submit the entire package, ensuring it is appropriately signed and dated. The application will then be reviewed by the USPTO examiner.

Verification and Confirmation of Submission

Following submission, the USPTO will send an email confirmation of receipt. It is important to save this confirmation for records and future reference. The USPTO examiner will review the SOU, and if there are any issues, an office action will be issued outlining any required corrections or clarifications.

Risks Related to Late Filing

Legal Implications of Late Filing

If an SOU is not filed within the specified six-month duration or extended time, the Intent-to-Use application can be declared abandoned. This legal implication can significantly affect a business as it would lose its rights to that particular trademark at the federal level.

Effects on the Trademark Status

Delaying the filing of an SOU can lead to the expiration of the Notice of Allowance issued by USPTO. This can result in the loss of rights associated with the trademark. To maintain these rights, the applicant must file a new application and begin the process from the start, which can be time-consuming and costly.

Remedial Measures in Case of Late Filing

If an applicant misses the filing date, they can request reinstatement if they can prove non-receipt of the Notice of Allowance. Otherwise, they may have to file a new application and start the process over again. Engaging a reputable trademark attorney can help monitor deadlines and ensure on-time filing.

Common Mistakes and How to Avoid Them

Submitting Incorrect Information

One common mistake is to submit incorrect information, such as inaccurate first-use dates, wrong identification of goods/services, or inappropriate specimens. This can lead to the USPTO office action rejecting your SOU. It's important to ensure that all entered data is accurate, relevant, and verifiable, and attached specimens represent actual use in commerce.

Incorrect or Missing Documentation

Incorrect or missing documentation can also lead to rejection of the SOU. Applicants should ensure that all required documents are included, that they are accurate, valid, and properly formatted. As such, it's crucial to be meticulous about meeting all the USPTO's documentation requirements.

Not Understanding the Importance of Timely Filing

Failure to appreciate the significance of timely filing is a common mistake that can lead to a lot of complications, including loss of the trademark. Engaging a seasoned trademark attorney or an experienced intellectual property expert is one way to avoid this issue. They can help track critical deadlines and facilitate timely and accurate filing of the SOU.

1. What is the optimum time for filing a Statement of Use application?

The proper time to file a Statement of Use application, which attests to a trademark's actual use in commerce, is within six months following a Notice of Allowance issued by the USPTO.

2. Is there a possibility to extend the deadline for the Statement of Use application?

Yes, extensions are available if a trademark applicant needs more time. One must file for an extension before the initial six-month period ends, and can get up to five six-month extensions.

3. Can someone file a Statement of Use application prior to receiving a Notice of Allowance?

No, an individual should wait to receive a Notice of Allowance from the USPTO before filing a Statement of Use application, to confirm the initial approval of the trademark.

4. How does one know that they need to file a Statement of Use application?

Upon initial approval of a trademark, the USPTO will issue a Notice of Allowance. This notice serves as the indicator that one should file a Statement of Use, providing evidence of the trademark in use.

5. What are the repercussions of not filing a Statement of Use application on time?

Failure to file a Statement of Use application within the right timeframe can result in the abandonment of the trademark application. This makes the trademark available for other entities to register and use.

6. What information needs to be included in the Statement of Use application?

The application should include a specimen showing use of the trademark in commerce, a filing fee, and confirmation of the goods/services with the trademark in use.