Filing a statement of use with the United States Patent and Trademark Office (USPTO) is a crucial step in the process of obtaining a trademark registration. The process, however, is often not as simple as it appears. This article aims to provide an overview on how to file a statement of use with the USPTO, outlining the necessary steps and requirements but also pointing out some of the pitfalls to avoid along the way. By understanding this process, individuals and businesses can ensure the successful registration and protection of their trademarks as opposed to abandonment and rejection of the same.
by Sarah Jones
updated 11/21/2023 | 4 Min Read
A statement of use is a legal document that demonstrates the actual use of a trademark in commerce. It serves as evidence to the USPTO that the trademark is being used in connection with the goods or services specified in the application. Filing a statement of use is necessary within a specific timeframe after receiving a Notice of Allowance from the USPTO. Failure to file a statement of use within this timeframe may result in the abandonment of the trademark application.
Understand the Requirements
Before filing a statement of use, it is essential to thoroughly understand the requirements set forth by the USPTO. The statement of use must include specific information, such as the trademark owner’s name, the trademark itself, the goods or services associated with the trademark, and evidence of the trademark’s use in commerce. Failure to provide accurate and complete information may lead to delays or rejection of the application.
For example, if a company named XYZ Inc. wants to register the trademark “XYZ” for clothing, they must ensure that the statement of use clearly states their ownership, the trademark “XYZ,” and provides evidence of the trademark’s use on clothing items, such as photographs or sales receipts.
Pitfall 1 to Avoid: The first Pitfall to be aware of at this stage is that the trademark as applied for must match exactly the trademark that appears in the Specimen of Use filed with the Statement of Use. If it does not, the application may be rejected causing delays in the registration process and possibly outright refusal of the same.
Pitfall 2 to Avoid: The Specimen of Use must actually be in use. In other words, it needs to be of a picture or screenshot of use that is actually occurring, not just a mock up of future packaging or a future web site. If you submit a specimen that is not in use the application may be rejected causing delays in the registration process and possibly outright refusal of the same.
Pitfall 3 to Avoid: And this one may be the most difficult to comprehend, but the Specimen of Use must actually show trademark use and not just ornamental use of a graphic or logo. In short, trademarks are used to tell the consumer the source of the goods or services. COCA COLA on a can tells us the soda is made by the Coca Cola company. GOOGLE on a website tells us the search engine services are being provided by Google. But a “yellow smiley face” on a t-shirt maybe cute, but it does not tell us who is providing it. As such, when providing the Specimen of Use it must actually be able to function as a trademark thus identifying the producer of the goods or services and cannot be merely ornamental. If it is merely ornamental, the trademark will be rejected.