A Statement of Use (SOU) is exactly what it sounds like: a statement indicating that a business is using a particular trademark in commerce. Despite its apparent simplicity, however, the United States Patent and Trademark Office (USPTO ) Statement of Use requirement can prove complex for many Louisiana businesses upon closer examination. Both established enterprises and new startups should strive to fully understand this complex issue when approaching the trademark application process. While an online article may provide basic insights, it cannot account for the unique goals and priorities of each business. To receive targeted guidance, consult with an experienced trademark lawyer in Louisiana after reading this article. Book a consultation with the Business Law Group today by calling (504) 446-6506. 

What Is the USPTO Statement of Use?

Businesses file Statements of Use to demonstrate to the USPTO that they are using their trademarks in commerce. If the USPTO requests a SOU, they will not grant the trademark application until they receive this filing. In some cases, an Intent To Use statement may be filed with the initial application instead, but the Statement of Use or an extension request must still be submitted within six months from the date the USPTO issues a Notice of Allowance for the trademark. 

What Should the USPTO Statement of Use Include?

The United States Patent and Trademark Office highlights three requirements for SOUs. These include enclosed fees, a sworn declaration, and at least one example of the trademark in use. Providing fees and the sworn statement is relatively straightforward, while providing an example of the trademark in use could be more challenging.

What Are the SOU Filing Fees?

The fee for a standard, electronic SOU filing is $100, while the fee for a paper filing is $200. Businesses must pay a separate fee for each “class” of product or service connected with the trademark. For example, a business may wish to use a trademark for chemical products, cleaning substances, and industrial oils. These three classes represent three different fees, or a total of $300 for an online SOU filing. 

How Do I Provide an SOU Sworn Statement?

An SOU must include a sworn statement affirming that the mark is in use. The owner of the trademark application usually signs the sworn statement, but the USPTO also allows other people to sign on their behalf in certain situations. If someone signs on behalf of the owner, they must be authorized to “verify the facts” of the filing. This might be someone with legal authority to bind the owner, someone who has firsthand knowledge of the trademark application, someone with “implied authority” to sign on behalf of the owner, or a qualified practitioner with power of attorney. To learn more about who might have the right to sign an SOU on behalf of an owner, consult with the Business Law Group. 

How Do I Provide a Specimen With the SOU?

An example of the trademark in use is called a “specimen.” Providing a proper specimen along with the SOU is important, as improper specimens often lead to rejected applications. The USPTO highlights numerous features of acceptable specimens, and they may reject specimens for various reasons. A specimen of a “good” may take numerous forms, including the product itself, labels, packaging, and e-commerce web pages. A specimen of a “service” might be a screenshot of online advertising, footage of a TV commercial, or a business card. Specimens cannot be digitally altered, and they must clearly depict the trademark in question. If the specimen is a digital file, the USPTO has very strict requirements regarding file formats and file sizes. A trademark lawyer in Louisiana can help businesses determine whether specimens meet these various requirements before submitting the SOU. 

When Is a USPTO Statement of Use Unnecessary?

The USPTO may only require a SOU under certain circumstances. If a business provides proof of use with its initial application, a separate SOU after the initial review of the application for trademark registration by the USPTO's examining attorney may not be necessary. SOUs are required for Intent-to-Use (ITU) applications, however, as businesses can file these applications even before they actually use trademarks in commerce. By filing as early as possible, these businesses can gain advantages over their competitors – even if they are not yet ready to use the trademarks in commerce. This strategy can “reserve” new, potentially popular trademarks until businesses have a chance to handle supply chains, manufacturing, and marketing materials. Once the USPTO issues a Notice of Allowance, the business may be ready to provide specimens. 

What Happens After You File a Statement of Use?

The SOU represents the final step in many trademark applications. After this filing, an examining attorney at the USPTO will examine the SOU and determine whether it meets the various requirements. They will pay particularly close attention to the specimen during this examination process. Because the SOU is often the final step in the application process, the next response from the USPTO will typically consist of an approval, a rejection, or in some instances a request for more information. 

The USPTO states that the entire application process usually takes between 12 and 18 months, and much of this process involves waiting for responses. Companies can streamline this process by avoiding mistakes and ensuring high levels of accuracy with their SOUs. If the specimen is improper, or the SOU has been signed by the wrong person, these mistakes may add months to the overall trademark registration process.

What Is the Grace Period for Trademark Statement of Use?

After a business receives the Notice of Allowance for their trademark registration, activating the requirement to submit a Statement of Use, the applicant has six months to respond. However, there is an additional six-month grace period above and beyond this deadline; companies needing this additional time can navigate the USPTO's Post-Notice of Allowance information to file an extension request In addition, companies can work with trademark attorneys in Louisiana to request extensions to these deadlines. This should provide companies with plenty of time to gather specimens and fill out the necessary forms. 

Contact a Trademark Lawyer in Louisiana Today

While the USPTO Statement of Use may seem like a relatively simple step, even a minor error can affect the trademark application process. To avoid issues like delays and rejected applications, many businesses choose to work alongside experienced Louisiana trademark attorneys. These legal professionals can help established businesses strive for positive results as they secure their trademark rights. The Business Law Group has experience with franchises and the unique system of French Foundational Laws in Louisiana. Our attorneys are ready to help Louisiana businesses navigate the federal trademark application process. Call (504) 446-6506 to learn more during a consultation.