Filing Statements of Use

USE-BASED TRADEMARK APPLICATIONS

After publication in the Trademark Official Gazette without a third party filing an opposition or request for extension of time to oppose, the USPTO will approve the mark for registration since use-based trademark applications already contain the necessary specimens and dates of first use. The USPTO takes about 2-3 months to issue the registration certificate after the lapse of the thirty (30) day opposition period.

INTENT-TO-USE (“ITU”) BASED TRADEMARK APPLICATIONS – FILING STATEMENTS OF USE AFTER ISSUANCE OF A NOTICE OF ALLOWANCE

For intent-to-use (“ITU”) trademark applications that have met the initial requirements of the USPTO, i.e., the marks are inherently distinctive and there are no prior marks that would bar registration due to creating a likelihood of confusion, the USPTO approves the mark for publication in the Trademark Official Gazette.

Publication grants the public thirty (30) days from publication to oppose registration based on a variety grounds, including prior use of a similar mark, likelihood of confusion, descriptiveness, genericness non bona-fide intention to use the mark and functionality. If no opposition or extension to oppose if file, the USPTO will issue a Notice of Allowance.

Upon issuance of a Notice of Allowance (“NOA”), an Applicant has six (6) months to file a Statement of Use (“SOU”):

• Declaring use of the mark on each of the listed goods and services;
• Indicating the date of first use for at least one item or service per class; and
• Providing the approximate date of first sale.

If the Applicant has not commenced use on some or all of the items, the Applicant may:

• File a Request for an Extension of Time for an additional six months;
• Delete items not in use and file a Statement of Use for those goods in use;
• Divide out those goods in use from those not in use and either extend or delete those items not in use from the application;
• or abandon the whole application.

Applicants have a total of 36 months from the date of issuance to file the Statement of Use otherwise the USPTO will cancel the application.

We assist clients in gathering the required documentation, digital images and dates of first use in order to file an acceptable Statement of Use. In the event the mark is only used on certain goods, we discuss filing strategies, such as dividing out certain goods and extended others in order to keep the client’s rights for as long as possible.