Trademark Applications Filed Under Intent-to-Use 1(b) Require a Statement of Use
If your trademark application was initially filed on a 1(b) intent-to-use basis, before you made any sales of your products or services in the marketplace, you will eventually need to show use of the mark on the goods or services identified in your application before your mark can be registered. This means that you must eventually submit an affirmation confirming that the applied-for mark is actually being used in commerce (“Statement of Use” or “SOU”) along with proof, so expect additional costs to cover subsequent work.
Cost to Prepare and Submit a Statement of Use and Proof of Use
In addition to the fees for the Standard Package or Premium Package, our firm charges $250 in legal fees to prepare your specimens and file a Statement of Use along with a $100 per-class government filing fee, which is paid to the USPTO when we file your Statement of Use. In this regard, filing a trademark application under in-use 1(a) is slightly cheaper than filing a trademark application under intent-to-use 1(b).
Statement of Use Requirements
For each class of goods and services listed in the trademark application, the applicant must provide:
- a date of first use in commerce for that class;
- a specimen of use for at least one product or service recited in that class; and
- a confirmation that the mark has been used on all other goods or services recited for that class, or a deletion of any goods or services for which the mark has not been used.
Acceptable Specimens of Use
The type of specimens that are acceptable for an SOU depend on whether goods or services are identified in the application. Generally, advertising and marketing materials are unacceptable for goods, but acceptable for services. For more information on acceptable specimens, see our Resource Center.
When to Submit Proof of Use
As long as the applied-for trademark has been used in commerce in association with the goods or services listed in the trademark application, a Statement of Use and Proof of Use may be submitted anytime during the application process except during the timeframe between the approval of the mark for publication and the Notice of Allowance. A submission of use filed before the examining attorney approves the mark for publication is called an Amendment to Allege Use or “AAU.” If the examining attorney has approved the mark for publication, then the applicant must wait until a Notice of Allowance is issued, which occurs after the publication period ends without opposition from third parties. A submission of use after the Notice of Allowance is called a Statement of Use.
Extension to File Statement of Use
The USPTO will issue a Notice of Allowance which will then require the applicant to further submit a Statement of Use within six months therefrom. If the applicant fails to file a Statement of Use by the end of the six month period following the Notice of Allowance or if the applicant needs more time to use the mark in commerce, he or she may seek a six (6) month extension to file the Statement of Use. A maximum of five extension requests may be made, giving the applicant a total of three (3) years from the Notice of Allowance date to file the Statement of Use.
Need to file a Statement of Use?
Email our law firm at firstname.lastname@example.org, call us 1 800-651-7301, or fill out the contact form below to see how we can help you file a proper Statement of Use with acceptable specimens.