Understanding the Statement of Use in Trademark Applications: Examples and Tips
I. Introduction
A. Definition of a Statement of Use in Trademark Applications
In the world of trademark registration, a Statement of Use is an essential document. It serves as a declaration, filed by the trademark owner, stating that their trademark is being actively used on the goods and services described in their application. This statement is supported by actual evidence, demonstrating the use of the trademark in commerce.
B. Importance of Filing a Statement of Use with the USPTO
Filing a Statement of Use with the United States Patent and Trademark Office (USPTO) is a crucial step in the trademark registration process. Without it, your trademark application will not progress, and ultimately, your mark will not be registered. The USPTO needs to see concrete proof that your trademark is actively being used in commerce, ensuring that only valid, functioning trademarks are granted registration. Filing a Statement of Use highlights your commitment to your trademark and helps establish your rights to the mark in question.
II. Notice of Allowance: The Starting Point
A. Explanation of a Notice of Allowance
A Notice of Allowance is a critical milestone in the trademark registration process. Issued by the United States Patent and Trademark Office (USPTO), it signals that your trademark application has been reviewed and no issues have been found that would prevent your mark from being registered. Essentially, it's a green light to move forward with the next steps in the trademark registration process.
B. Six-month Deadline to Respond to the Notice of Allowance
Once you receive the Notice of Allowance, it's essential to act promptly. You have a six-month deadline to respond to the notice by either filing a Statement of Use or an Extension of Time to file a Statement of Use. This timeline is crucial, as failure to file within the deadline may result in your trademark application being considered abandoned. Keeping track of this deadline and ensuring you respond accordingly is paramount to the successful registration of your trademark.
III. Demonstrating Use in Commerce: Goods and Services
A. Requirements for Proving Use in Commerce for Goods
For goods, "use in commerce" means that the physical products have been sold to U.S. consumers, and the goods display the trademark applied for. It's crucial that the items or their packaging showcase the trademark you're seeking to protect. For example, if your trademark covers "cell phone cases," the cases must have been sold in the U.S., and the cases or their packaging should visibly display the trademark before you can file a Statement of Use.
B. Requirements for Proving Use in Commerce for Services
When it comes to services, "use in commerce" takes on a slightly different meaning. In this context, you must have advertised your services using the trademark and secured U.S. clients for the services described in your trademark application. Simply advertising your services without securing clients is not enough. You must demonstrate that new clients have been acquired as a result of your trademarked advertisements before you can file a Statement of Use.
C. Statement of Use Trademark Example
Consider a trademark application for a fitness training service called "FitPro." To file a Statement of Use, the trademark owner must show that they have advertised the "FitPro" services and gained new clients in the U.S. who have purchased those services. Evidence may include a screenshot of the "FitPro" website, showing the trademarked name and logo, as well as client testimonials or receipts demonstrating that the services have been provided to U.S. customers. By providing such evidence, the trademark owner demonstrates their use of the "FitPro" trademark in commerce, meeting the requirements for a Statement of Use.
IV. Filing a Statement of Use with Markavo®
A. Benefits of Choosing Markavo® for Filing a Statement of Use
Markavo® offers a range of benefits when it comes to filing a Statement of Use for your trademark application. With experienced trademark attorneys handling your case from start to finish, you can avoid making fatal mistakes when proving use in commerce. Trusting Markavo® with your Statement of Use filing ensures that you receive professional, reliable service, increasing the likelihood of successful trademark registration.
B. Markavo®'s Attorney Review and Filing Process
When you choose Markavo® to file your Statement of Use, you can expect a thorough and efficient process. After you provide your trademark application serial number and evidence of use, a trademark attorney—not a paralegal—will review your information, manage your case, and file the necessary paperwork with the USPTO. This level of expertise and personalized service sets Markavo® apart from other providers.
C. Pricing for Markavo®'s Statement of Use Service
Markavo® offers a simple, no-tricks pricing structure for their Statement of Use services. For a one-time fee of $125, an attorney will review your current use of your trademark, provide advice on the next steps, and file the appropriate documents with the USPTO. This competitive pricing makes Markavo® an attractive choice for trademark applicants seeking expert assistance in filing a Statement of Use.
V. Extension of Time: When and How to File
A. Reasons for Filing an Extension of Time
There may be situations where you are unable to provide sufficient evidence of use in commerce within the six-month deadline following the Notice of Allowance. In such cases, you can file an Extension of Time to file a Statement of Use. This allows you an additional six months to gather the necessary evidence or make the required preparations to demonstrate use in commerce of your trademark.
B. Number of Extensions Allowed and Associated Costs
The USPTO allows up to five Requests for an Extension of Time, each granting an additional six months to file a Statement of Use. However, each extension request comes with a filing fee of $150 per class, in addition to Markavo®'s $125 legal fee. It is important to consider these costs and plan accordingly to ensure you can demonstrate use in commerce within the allowed time frames.
VI. Consequences of Missing Deadlines and Filing Late
A. Abandonment of the Trademark Application
Missing the deadline to file a Statement of Use or an Extension of Time can have severe consequences for your trademark application. If you fail to meet the deadline, your application will be considered abandoned. This means that all the time, effort, and resources invested in your trademark registration process could be lost.
B. Options for Reviving an Abandoned Application
If your trademark application is deemed abandoned, the USPTO will issue a Notice of Abandonment. However, they also provide one last opportunity to revive your application by filing a special petition and paying late fees. This petition must be received within two months of the Notice of Abandonment. While this option exists, it is always better to avoid reaching this stage by being vigilant about deadlines and ensuring timely filings of Statements of Use or Extensions of Time.
VII. Registration Timeline and Federal Trademark Rights
A. Estimated Registration Timeline After Filing a Statement of Use
After filing a Statement of Use, you can typically expect your trademark to be registered within three to five months. This timeline may vary depending on the specifics of your application and any potential delays or issues that arise during the registration process. Being proactive and promptly addressing any concerns can help expedite your trademark registration.
B. Connection Between Application Filing Date and Federal Trademark Rights
It is essential to understand the relationship between your application filing date and your federal trademark rights. Once your trademark is registered, your federal trademark rights date back to the day your application was filed, not the date the Statement of Use was filed. This means that even if it takes several years to demonstrate use in commerce and complete the registration process, your trademark protection extends from the date your application was initially submitted, safeguarding your brand and investment.
VIII. Tips for a Successful Statement of Use
A. Ensuring Accurate and Sufficient Evidence of Use in Commerce
One of the keys to a successful Statement of Use is providing accurate and sufficient evidence of your trademark's use in commerce. Ensure that you gather clear, compelling examples that demonstrate your trademark's presence on goods, packaging, or in service advertisements. The stronger your evidence, the more likely your Statement of Use will be accepted by the USPTO.
B. Monitoring Deadlines and Filing Extensions When Necessary
Being vigilant about deadlines is critical when filing a Statement of Use. Keep track of the six-month deadline following the Notice of Allowance and, if needed, file an Extension of Time to avoid abandoning your trademark application. Proactively managing deadlines can help ensure a smooth registration process.
C. Working with Experienced Trademark Attorneys for a Higher Success Rate
Finally, consider working with experienced trademark attorneys like those at Markavo®. Studies show that trademark applicants represented by attorneys are 50% more likely to successfully register their marks than those who go it alone. By entrusting your Statement of Use filing to experts, you increase your chances of obtaining trademark registration and protecting your brand in the long run.
IX. Conclusion
A. Importance of Properly Filing a Statement of Use for Trademark Registration
Properly filing a Statement of Use is a crucial step in the trademark registration process. It helps secure your trademark rights and ensures that only functioning trademarks are granted registration. By diligently gathering evidence, meeting deadlines, and filing the necessary documents, you demonstrate your commitment to your trademark and increase the likelihood of successful registration.
B. Benefits of Choosing Markavo® for Navigating the Statement of Use Process
Choosing Markavo® for your Statement of Use filing offers numerous advantages. With their team of experienced trademark attorneys, straightforward pricing, and personalized service, Markavo® can help you navigate the Statement of Use process with confidence. By entrusting your trademark registration needs to Markavo®, you can focus on building your brand while benefiting from their expertise and high success rates. Let Markavo® file a Statement of Use for your business today.
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Aug. 16, 2023