Completing Your Trademark Journey in the USA - Simplifying the Statement of Use

Introduction

In the United States, filing a trademark application on an intent-to-use basis requires the subsequent submission of a Statement of Use (SOU) to finalize the registration. This article discusses the significance of filing the SOU, details the applicable requirements and deadlines, and outlines the potential consequences of failing to submit it.

Understanding the Intent-to-Use Application

Before actually using a trademark in the United States, an applicant may file a trademark application on an “intent-to-use” basis. This allows the applicant to secure priority for the mark at an earlier date, effectively reserving their trademark rights in advance. However, this benefit comes with an important requirement: although the application may be filed before the mark is used, the applicant must submit a Statement of Use (SOU)—generally within one year from the filing date—to demonstrate that the mark has become commercially active in the U.S.

Requirements for Filing a Statement of Use

To file the Statement of Use (SOU), the applicant must demonstrate lawful commercial use of the mark in the United States for all goods and services listed in the trademark application.

Preparing the Statement of Use

The Statement of Use must include the date of first use in commerce in the United States, along with specimens demonstrating the mark’s use in connection with the goods or services listed in the application. Acceptable specimens may include real-life product images displaying the trademark, packaging or labels bearing the mark, or website pages showing that the services identified in the application are being offered in the United States. The images submitted must not be digitally altered, mocked up, or AI-generated; they should be genuine photographs captured against an appropriate background and presented in clear, high resolution.

Deadlines for Submitting the Statement of Use

Once a trademark application has cleared examination, addressed any objections, completed publication, and passed through any opposition proceedings, the USPTO will issue a Notice of Allowance. Following this, the applicant is required to file the Statement of Use (SOU) within six months. If the mark has not yet been used in commerce in the United States, the applicant may request an extension. The USPTO allows up to five extensions, each providing an additional six months to file the SOU. While this framework offers flexibility for applicants who are not yet ready to demonstrate commercial use, it is still bound by the strict limit on the number of extensions permitted.

Consequences of Not Filing the SOU:

If the Statement of Use (SOU) is not filed within the prescribed deadline—six months from the Notice of Allowance, including any granted extensions—the trademark application will be deemed abandoned. As a result, the applicant will forfeit any rights to the trademark.

Issues Encountered in Statement of Use Submission and Strategies for Resolution

Most applicants file a trademark application at an early stage to secure rights over their brand name on an intent-to-use basis. However, failure to file the Statement of Use (SOU) can result in the abandonment of the trademark. To address this issue, an applicant should consider the following:

Filing Only When Ready: The applicant should proceed with filing on an intent-to-use basis only if they are reasonably confident that they will begin commercial use of the mark in the U.S. within approximately one year of filing.
Extensions: If the applicant requires additional time to commence use, they may proceed with an intent-to-use application and utilize available extensions, which come with additional costs.
Proper Specimens: SOUs are frequently rejected due to improper specimens. Common issues include: images with inappropriate backgrounds, goods bearing the trademark that are not listed in the application, digitally altered or mocked-up images, and websites that do not clearly demonstrate that the services listed in the application are being offered in the U.S.

To avoid rejection, applicants should:

Ensure that the goods and services are accurately and appropriately listed in the application, without including items not intended for use in the U.S.

Capture images of goods against proper backgrounds, reflecting genuine commercial use.

Clearly indicate on websites that the services listed in the application are being actively provided in the U.S.

By following these guidelines, applicants can significantly reduce the risk of SOU rejection and protect their trademark rights effectively.

Conclusion

Applicants filing a trademark on an intent-to-use basis must exercise careful planning and fully understand all requirements for completing the registration process. Being well-informed about the Statement of Use (SOU) obligations, specimen requirements, deadlines, and potential extensions can help prevent common pitfalls such as application abandonment or SOU rejection. Proper preparation not only saves time and reduces unnecessary costs but also ensures a smoother and more efficient registration process, ultimately securing the applicant’s rights to their trademark in the United States.

References :
1. https://www.uspto.gov/trademarks/apply/statement-use-sou-minimum-filing-requirements
2. https://www.uspto.gov/trademarks/trademark-timelines/section-1b-timeline-application-based-intent-use#9b