Statement of Use

If trademark applicants aren’t using their mark in commerce, the applicant can file an Intent to Use Application and generally, if all goes well, receive a Notice of Allowance. Within six months of being granted the Notice of Allowance, the applicant generally has to prove that it is now using the mark or request up to five six-month extensions. The USPTO requires a specimen to prove use in commerce when a Statement of Use is filed.

• A $150 per class USPTO fee.
• A specimen of the mark showing that it is in use in commerce.
• Verification that the mark is in use as indicated on the application.

A Statement of Use is generally due within six months from when the USPTO issued the Notice of Allowance, or within six months of a previously granted extension. Generally, missing the deadline means the application will be considered “abandoned.” Future efforts to register the trademark will typically require the applicant to start all over including payment of new USPTO filing fees.

n addition to Us Trademark Service’s service fee, the USPTO charges $100 per class, which is the USPTO filing fee.

A mark is considered to be 'in commerce' when it is used in the following manner, as stated in 15 U.S.C. § 1127:It is common practice for a mark to be used in commerce when two things happen: (A) the mark is displayed in some way on the goods or their containers, or on tags or labels attached to them; or (B) the goods are sold or transported in commerce, unless the nature of the goods makes this impractical.The term 'use in commerce' is often used to describe the situation where a mark is used in connection with the sale or advertising of services, or when those services are provided in more than one state or between the US and another country, and the service provider is involved in commerce as a result of those services.

A specimen is a tangible example of the mark in use in connection with the specified products or services as stated in the application. This is the part of a product or service that buyers encounter firsthand.

More specific recommendations from the USPTO are as follows:

Typically, a product specimen will showcase the mark either directly on the product, on any labels or tags attached to it, on the packaging, or even in a window display. Youcan't utilize promotional materials or documents used in your day-to-day operations (invoices, packing slips, etc.) as examples of the products you're selling. The following products sample are usually accepted by the USPTO:

A product shot that shows the mark in its natural habitat (like the base of a coffee cup)

Tags and labels on products that display the mark (such as a t-shirt label)

Marked product packaging (such as laundry detergent and soap containers)

Merchandise display signage (such as a picture of the display)

An online page that features the product, describes it, and includes information on how to buy it (for instance, a page that displays a picture of a laptop computer, the laptop's mark above the photo, the price below the photo, and a shopping cart button/link on the page).

For software that can be downloaded, we ask that you provide us with (1) screen captures of the instruction manual and any relevant information from the product's purchase or buying page, (3) launch screens that display the mark in an introduction message box that appears after opening the program, or (2) the actual program itself that displays the mark in the title bar

It is common practice to display the mark utilized in the sale, rendering, or advertising of services on a specimen. Your mark must be easily recognizable by consumers as belonging to the services you specified in your application. The following specimens are usually accepted for services by the USPTO:

Printed or online ads

Flyers, brochures, and

Dining establishment menus

Formal stationery and business cards

Advertising and publicity documents

A shot of many billboards and company signs

A snapshot of a band playing live with some sort of name display (like a drum)

*Demonstrations of the relationship between the mark and the services must be provided by advertising, marketing, and promotional materials. For example, if your mark mentions the services directly, as ABC MEDICAL for a medical clinic, then the specimen would provide a sufficient direct association.

To prevent abandonment, applicants must use the mark in commerce within six months after receiving the Notice of Allowance from their Intent to Use application. Subsequently, they may need to submit an extension request along with the necessary fee(s). Applicants are typically granted five six-month extensions by the USPTO.

In addition to Us Trademark Service’s service fee, the USPTO charges $150 per class which is the USPTO filing fee.

An applicant has the option to 'divide an application' in these situations. The reason behind the additional UPSTO fees is because this process results in the creation of what the USPTO refers to as a 'child' and 'parent' application. Due to the additional processing, the Us Trademark Service service charge has been significantly raised. However, some businesses prefer to split their applications in order to register a mark for one category of goods while keeping rights to another intact. This can register for the class of goods or services that are already in use, but allow an extension of the six-month deadline for the class of goods that are not yet in use.

When submitting the Statement of Use, applicants can simply disclaim any classes that they do not wish to register for, even if they receive a Notice of Allowance for numerous classes. In most cases, when an applicant disclaims a class, the USPTO will move on with the application as though it had never been filed for that class, while continuing to pursue the remaining class or classes.

Take apparel as an example that everyone is familiar with; it will help us comprehend. Shirts, pants, and shoes are frequently listed in Intent to Use forms filed under Class 25 for clothes. So, let's pretend the candidate is only selling shirts and not pants or shoes. Similar to how a class is erased from a trademark registration, any products descriptions within a class that are not included in the Statement of Use will also be deleted. In order to address any components that were omitted from the Statement of Use, the applicant will need to submit a fresh trademark application. The applicant must affirm, under penalty of perjury, that it is really using the mark for all of the items specified on the Allegation of usage, even though the USPTO may ask for a specimen demonstrating usage for only one type of good or service within the class (in our case, a shirt). So, if an applicant is only selling a subset of a class's items, they may wish to request a deadline extension or split their application.