If your federal trademark application was filed on an intent-to-use basis (i.e. your trademark was not in use at the time you filed your application), you must prepare and submit the Statement of Use before the Trademark Office will grant registration of your trademark. The Statement of Use is basically a sworn declaration that your trademark is currently in use in commerce in connection with all of the products and/or services listed in your trademark application. The Trademark Office requires you to (1) set forth the date on which your trademark was first used anywhere in the United States, (2) set forth the date on which your trademark was first used in interstate commerce, and (3) submit a proper specimen showing actual use of your trademark.
The Statement of Use is generally filed after the Trademark Office issues the Notice of Allowance, which is a formal notification that your trademark application was accepted by the Trademark Office and that the 30 day opposition period has expired. You then have six months from the issue date of the Notice of Allowance in which to file the Statement of Use. In the event you are unable to put your trademark in use within those six months, you may obtain an additional six months by filing a Request for an Extension of Time. If you fail to timely file the Statement of Use or an Extension of Time, your trademark application will go abandoned. You can request up to five Extensions of Time before you must submit the Statement of Use.
Along with the Statement of Use, you have to submit a proper specimen evidencing actual use of your trademark. If your trademark is used in connection with products, acceptable specimens include labels, tags, stickers, product packaging, instruction manuals, or photographs of the product itself with the trademark stamped on it. On the other hand, if your trademark is used in association with services, acceptable specimens would include advertisements, brochures, flyers, and website printouts. You must submit a specimen for each class of products/services listed in your trademark application.
After the Statement of Use is submitted, the trademark examining attorney assigned to your application will review it. If it meets all of the requirements, it will be accepted and the Trademark Office will issue the Certificate of Registration within a couple of months. If the Statement of Use is rejected, the trademark examining attorney will notify you of the reasons for the rejection and will give you six months in which to remedy the problem. While some rejections can be overcome, others cannot. Should the rejection be incurable, you will have no choice but to allow your application to go abandoned and to begin the trademark registration process all over again by filing a new trademark application.
Once the Statement of Use is filed, it may not be withdrawn for any reason. Therefore, it is absolutely critical that you are able to meet all of the legal requirements for filing the Statement of Use and that no mistakes are made in the preparation and filing of the Statement of Use.
If you have any questions about whether you are in the position to file the Statement of Use, or perhaps need some help with preparing and filing the Statement of Use, please give me a call for your free legal consultation. I look forward to hearing from you soon.