Earlier this month I wrote about a Notices of Allowance in a trademark application. A Notice of Allowance is the United States Patent and Trademark Office’s manner of moving the substantive portion of examination toward registration; the Office notifies the applicant that application seems ready for registration and then invites the applicant to submit proof that the mark is being used in commerce. The Statement of Use is the applicant’s official response to the Notice of Allowance.
No trademark application, but for some trademarks with foreign priority claims, will register without proof of use of the mark. The Statement of Use submits proof of use. It includes a number of things. First, the Statement of Use declares that the trademark is in use in commerce with the goods and services identified in the trademark application. Second, it declares a date that the mark was first used in commerce. Third, it declares a date that the mark may have been used, regardless of whether such use was in commerce or not. Fourth, the Statement of Use provides a specimen, or an example of how the mark is being used. Multiple specimens are sometimes submitted. If the application contains multiple classes – different categories of goods and services – a specimen for each class is required. Sometimes, the applicant will also file multiple specimens within a class as well.
A Statement of Use is a filing that swears that the mark is being used on all the goods identified in the application. If some of the goods or services aren’t being offered, an applicant should remove those goods not offered, lest the application and resulting registration be at risk of later cancellation, generally.
A Statement of Use must be submitted within six months of the Notice of Allowance mail date. If it is filed late, it will not be accepted unless accompanied by a Petition to Revive. However, the six-month deadline can be extended. A Request for Extension of Time to File a Statement of Use asks for an additional 6 months to submit the Statement of Use. Further Requests can be filed, but no more than five extension can be obtained in a single application. Failure to file the Statement of Use after the fifth extension results in the abandonment of the application.
The Statement of Use is thus the official mechanism for responding to a Notice of Allowance and presenting the necessary proof of use to finalize the trademark application.