A statement of use or extension of time are required filings after the USPTO has issued you a Notice of Allowance.
By Desirée Townsend
After your trademark application has been assigned to an Examining Attorney at the USPTO, they will conduct a review of your application. Once the review is complete, and the Examining Attorney raises no objections to your registration, they will issue a Notice of Publication which will give you the date your trademark will publish in their Official Gazette. Click here to access the USPTO's Official Gazette.
Learn more about the Publication Period at the USPTO.
If no one opposes your trademark during the 30-day publication period, your application proceeds to the next step in the registration process and will be issued a Notice of Allowance. This means that you will be required to submit a Statement of Use (SOU) by a designated deadline of 6-months, or file an extension for an additional 6-months of time.
A statement of use is submitting proof to the USPTO that the applied for trademark is being used in commerce in association with the listed goods or services. This proof is submitted to the USPTO as as specimen.
Please read our article on specimens for more information and also read more at the USPTO.
Be a real life example of how you use your trademark in commerce in association with your goods or services. The specimen cannot be a mock-up, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your trademark might appear.
Show your trademark used in association with the goods or services listed in your application.
Depict the same trademark as shown in the application. If it is a word mark, it must be used exactly as filed in the application. If it is a logo, the exact design must be shown in use in commerce in association with your goods or services. If you redesign your logo, and stop using what you had previously filed, a new trademark application will need to be filed.
Be an appropriate type of specimen based upon your particular goods or services. For example, advertising material is an acceptable specimen for services, but not for goods. Please read our article on specimens for more information and also read more at the USPTO.
Show your trademark used in a way that directly associates the trademark with your listed goods or services.
Include the URL and date you accessed or printed the webpage if you are submitting a screenshot of a website as a specimen.
Be attached to the filing form as a JPG or PDF file of up to 5 megabytes, or a WAV, .WMV, .WMA, .MP3, .MPG, or .AVI files of up to 30 megabytes.
As part of the Statement of Use filing, you must provide the USPTO with the dates of first use of your trademark for each of the listed class on the application. The USPTO has two defined dates of first use, often these dates are the same, but in some cases they can be different:
A Date of First Use Anywhere: The date the trademark was first used anywhere on or in connection with the goods or services in the application or allegation of use;
A Date of First Use in Commerce: The date the trademark was first used in commerce on or in connection with the goods or services in the application or allegation of use.
It is important to understand the difference in these two dates.
The date the mark was first used “anywhere” means use in the United States or elsewhere, regardless of whether the nature of the use was local, national, intrastate, or interstate, or any other type of commerce. The date of first use anywhere will always be earlier than, or the same as the, date of first use in commerce.
A date of first use in commerce means the date when the goods were first sold or transported, or the services were first rendered, under the trademark in a type of commerce, such as interstate commerce or commerce between the United States and a foreign country.
If you are not yet ready to show proof of use in commerce, the USPTO allows the filing of a 6-month extension of time on intent-to-use trademark applications. Up to 5 extensions can be filed on a trademark application. Each extension of time has a USPTO government filing fee of $125 per classification of goods or services listed on the application.
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