By submitting a trademark application, you are one step closer to protecting your brand’s identity and ensuring that no other business can profit from your ingenuity. While the United States Patent and Trademark Office (USPTO) Statement of Use is a powerful legal tool that allows you to file for protection before you begin using your trademark, it is only required in some situations. At Grabbe Law Office, our experienced intellectual property attorneys guide business owners through the process of applying for trademark registration, including the submission of a Statement of Use when required. To discuss your brand and your business trajectory with our team, consider connecting with our dedicated legal team at (785) 621-4711 today. 

What Is a Statement of Use?

In order to grant trademark rights, the United States Patent and Trademark Office requires that a desired name, slogan, or logo will be “used in commerce”. The USPTO Statement of Use is an official form used to prove that the applicant is using the desired trademark in commerce.

What Is Considered Use in Commerce?

According to the USPTO, use in commerce refers to the use of your trademark to sell/transport goods, or provide services, to consumers who live outside of your state. For instance, if you grow an agricultural product in Iowa and sell it to buyers in New York or Canada, you are using a trademark in commerce. Likewise, if you are a website developer who provides services from your home in California to clients in Massachusetts or the United Kingdom, you are engaging in commerce.

 This concept is distinct from intent to use, which means that while you have not started actively using your trademark in commerce, you intend to do so within the next 3-4 years. While you can apply for a trademark on an intent-to-use basis, it is not possible to register your trademark until you can demonstrate that it is currently used in commerce through the Statement of Use.

Who Should File a Statement of Use?

Any applicant who originally filed a trademark application on an intent-to-use basis is required to file a Statement of Use to prove that they have started using the mark in commerce. If you are required to file a Statement Use, the USPTO will issue you a Notice of Allowance. This Notice of Allowance acts as a 6-month warning to utilize your trademark in commerce. Within that period, you must either file a Statement of Use or request an extension. If your request for extension is approved, you will be granted an additional six months to file the Statement of Use.

What Is the Difference Between Statement of Use and Allegation of Use?

Both the USPTO Statement of the Use and the Allegation of Use are used to show that a trademark is being used in commerce. The principal difference between these two forms is in the timing. The allegation of use must be submitted after the application date but before the mark is approved for publication (37 C.F.R. §2.76(a)).

 If an applicant does not file an allegation of use within this timeframe, or if the allegation of use is filed and withdrawn, then a Notice of Allowance will be issued. It is at this point when the Statement of Use becomes necessary. Technically speaking, the Statement of Use must be submitted after the examination is passed and the Notice of Allowance is sent – never before.

What Is the Difference Between a Statement of Use and a Declaration of Use?

Again, the primary difference between a Statement of Use and a Declaration of Use is the time of filing. While the Statement of Use is submitted within 6 months of the Notice of Allowance, a Declaration of Use is not completed and filed until years after the trademark has been registered. The first Declaration of Use is typically filed between the fifth and sixth year of the trademark’s registration, and is subsequently filed every ten years thereafter.

What Happens After the Statement of Use Is Approved?

After you file the USPTO Statement of Use, an examining attorney will review the form and send you an action letter if there are any additional requirements that have not yet been satisfied. If all issues are resolved and the Statement of Use is approved, your trademark will be registered within approximately two months.

What Happens If a Statement of Use Is Rejected?

If the Statement of Use is rejected, you will be notified of the rejection in a trademark office action. This form will outline all of the reasons for rejection, which often involves specimen refusal, and you will be given time to rectify the issue. If the issue cannot be overcome, then you may be forced to abandon the trademark application and start the process again.

It is also important to note that once the Statement of Use is filed, it may not be withdrawn under any circumstances. As such, it is critical that your application meets all the necessary legal requirements and that no mistakes were made in the preparation of the form. At Grabbe Law Office, our experienced trademark attorneys help applicants ensure that the Statement of Use is prepared and filed according to the stringent standards of the USPTO to maximize their chance of approval.

How to Respond to a Specimen Refusal?

If your USPTO Statement of Use was rejected due to a specimen refusal, there are several options for overcoming this issue. If possible, your attorney may file an “insurance” extension to provide you with additional time to fix errors in the initial trademark application. If the deadline has already passed, there are still options, although more limited. 

While you will not be able to change your product or packaging to fit the USPTO standards, you may be able to provide evidence that demonstrates the satisfactoriness of your specimens or submit additional specimens that existed before the filing deadline for the Statement of Use. At Grabbe Law Office, our dedicated intellectual property attorneys strategize with trademark applicants to overcome specimen refusals and secure approval for their IP.

How Can Grabbe Law Office Help with Your USPTO Statement of Use?

At Grabbe Law Office, we empower business owners to create, grow, and protect their dreams. With the help of our experienced attorneys, you can feel confident in your trademark application and ensure that you are moving forward with clarity and awareness. We have over two decades of experience navigating the trademark process for companies across the country. To learn more about how we can help with your USPTO Statement of Use, consider contacting us today at (785) 621-4711.