What is the Trademark application Statement of Use. Is it possible for my attorney to file an extension of time? And what is the difference between an intent to use application and use based trademark application? How can I file it without getting an office action because of my specimen?

WHAT IS A STATEMENT OF USE?

Congratulations if you need to file your Statement of Use (“SOU”). That means your application has received a Notice of Allowance and will be approved upon the filing of the SOU. A Statement of Use is an oath filed by the applicant or the applicant’s attorney, in which the applicant makes an “allegation of use” that he/she is actually using the trademark in interstate commerce in connection with the goods and services originally filed for trademark lawyer.

When do I file the Statement of Use?

If the trademark application was filed on a “use” or 1A basis, then there is no need to file a SOU. But if the application was filed on an “intent to use” or 1B basis, and you thereafter have received a Notice of Allowance, you must file the SOU within 6 months from the issue date of the Notice of Allowance. If you fail to file anything, your application will go ABANDONED.

What do I need to provide you to file the Statement of Use?

The point of the SOU is to prove that you are actually using the trademark in connection with the goods and services filed for. Therefore, we need the following to file the SOU: (1) the earliest date of first use of your trademark in commerce in connection with the goods and services filed for; and (2) a specimen of the trademark in connection with the goods. The specimen must be a JPEG picture sent to our office via email clearly showing a picture of the same exact trademark as originally filed on the goods, or in connection with the services.

– For Goods: if the trademark class is for goods, then you must provide us with a JPEG picture of the exact trademark as originally filed, on the actual goods. You may submit a tag or label for the goods; a container for the goods; a display associated with the goods; or a photograph of the goods that shows use of the mark on the goods. Do not submit the actual product. For example, if the goods are for medication, then the trademark must clearly appear on the packaging of the medication. For clothing, such as shirts, the trademark must be either on the back tag of the shirt, or possibly sleeve or lower bottom corner of the shirt. Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases, letterhead and business cards generally are NOT acceptable specimens for goods.

– For Services: a specimen for a mark used in connection with services must show the mark used in the sale or advertising for the services. You may submit a sign; a brochure about the services; an advertisement for the services; a business card or stationery showing the mark in connection with the services; or a photograph showing the mark as used in rendering or advertising the services. There must be some reference to the type of services rendered on the specimen, i.e., not just a display of the mark itself. For example, if the mark sought to be registered is “XYZ,” a business card that only shows the mark “XYZ” would not be acceptable. A business card that states “XYZ REAL ESTATE” would be acceptable.

Note: The jpeg specimen must look EXACTLY as it was originally filed for. If the original trademark is a design mark or logo and your specimen has a different font and different pictures, the USPTO will reject the SOU.

What if I am not actually using my trademark yet, but have already received the Notice of Allowance?

We can file an extension of time to file the SOU. The extension of time to file the SOU will give us an additional 6 months from the original issue date of the Notice of Allowance. We can get up to 5 extensions of time (6 months each). However, the SOU cannot be filed more than 36 months from the original issue date of the Notice of Allowance.

What are your fees for the Statement of Use or the extension to file the Statement of Use?

We charge a flat fee of $400 to file the SOU per each class, or $400 to file the extension per each class. Our fees already include the USPTO fees which are $100 for the SOU and $150 for the extension per class as of 2008.