What is a statement of use or amendment to allege use?

A statement of use or amendment to allege use is submitted to the United States Patent and Trademark Office (USPTO) when registering your trademark. It shows that you are actually using the mark in your day-to-day operations on the goods and services listed in your trademark application. You aren’t just reserving the mark so that others can’t register the mark.

What is the difference between an amendment to allege use versus a statement of use?

An amendment to allege use is the same as a statement of use but differs in its timing. A statement of use is filed after receiving a notice of allowance from the Trademark Office. In contrast, an amendment to allege use is essentially a statement of use filed before the notice of allowance.

When can you file the statement of use or the amendment to allege use?

You can file the statement of use or amendment to allege use before the trademark office approves your trademark for publication and after the notice of allowance has been issued.  The period between these two events is identified as the blackout period.

When is the deadline to submit the statement of use and are there any extensions?

The statement of use can be submitted with and after filing the trademark application. However, it must be submitted no later than six months after receiving the notice of allowance for the registration of your trademark. Otherwise, you must file an extension of time to file the statement of use. You can file a total of 5-time extensions. By filing all 5-time extensions, you can file a statement of use up to 36 months after receiving the notice of allowance.

What is a statement of use?

The statement of use includes:

1. a specimen of your use; and
2. a date of first use anywhere and the date of first use in commerce.

The specimen is a real world example of how you are using the trademark in commerce. For example, are you labeling it on the packaging or on the product itself? The specimen would simply be a photo of the product showin the mark.  Alternatively, is the mark being used on your website?  The specimen would be a screen shot of your website.

Typically, for services, an advertisement of the services along with the mark is an acceptable specimen for the statement of use. However, for goods, the product itself must be marked with the trademark. Sometimes, we understand that it’s not. In these instances, another way to show trademark use is to show the mark on a hangtag, label, packaging, or shipping box. These are also acceptable specimens.

What is the difference between a use in commerce versus a use anywhere?

When submitting a Statement of Use (SOU) or Amendment to Allege Use (AAU), you are required to inform the USPTO of two dates:

1. The date you first used the trademark anywhere.
2. The date you first used the trademark in commerce.

The distinction between “use anywhere” and “use in commerce” lies in the geographical scope and the nature of the trademark’s usage:

• Use Anywhere: Refers to the first bona fide use of the trademark in any location, even if it’s confined to a local area. For instance, if a local dentist uses a trademark solely within their town, that constitutes “use anywhere.” The date of first use anywhere would be when the trademark was first applied to goods or services locally.  However, this is not a use in commerce.
• Use in Commerce: Refers to the use of the trademark in activities that are subject to federal regulation, typically involving interstate commerce. For example, if a product bearing the trademark is shipped to another state, the date of that first shipment would mark the “use in commerce.”  It would also qualify as a use anywhere.

Here’s the logic.

• Use in Commerce: Activities that fall under federal jurisdiction, such as shipping goods across state lines or offering services via a website that can be accessed nationwide, qualify as “use in commerce.” For example, if a local barber advertises services online, the internet presence can establish “use in commerce.”
• Use Anywhere: In contrast, “use anywhere” applies to purely local activity. For example, a barbershop serving only local customers would have “use anywhere” but not necessarily “use in commerce,” unless it also engages in federally regulated activities (e.g., online advertising).

Since “use anywhere” refers to the earliest use of the trademark regardless of geographical scope, it must occur first or at the same time as “use in commerce.” It is impossible for “use in commerce” to precede “use anywhere,” as the broader interstate use cannot exist without the trademark having been used somewhere first.

What happens after a statement of use or amendment to allege use is accepted by the USPTO?

• After a Statement of Use (SOU) is Accepted:
  Once the USPTO accepts your Statement of Use, your trademark will proceed to registration on the Principal Register. This process typically takes about two months. Once registered, your trademark will enjoy all the rights and protections of a federal trademark registration, including the presumption of nationwide validity and the ability to use the ® symbol.
• After an Amendment to Allege Use (AAU) is Accepted:
  If the USPTO accepts your Amendment to Allege Use, your trademark application will be converted from an intent-to-use (ITU) application to a use-based application. This means your application now asserts actual use of the trademark in commerce. Once an AAU is accepted, you will not need to file a Statement of Use after receiving the Notice of Allowance (NOA).

What happens if a statement of use is rejected?

If a statement of use is rejected, then a substitute specimen must be submitted to the Trademark Office. The due date to respond to a rejection of the statement of use is typically six months after the mail date.

You need to remember that you now have two different deadlines to keep track of.

The first deadline is the deadline to respond to the rejection of the statement of use. The second deadline is the deadline to submit a suitable specimen. These deadlines often are not on the same date.

The deadline to submit a suitable specimen relates to the date when the specimen was generated. You cannot merely make a mock-up of a specimen and submit it. Rather, the trademark must have actually been in use before the deadline to submit a suitable specimen.  This deadline is pegged to the mail date of the notice of allowance and is extended in six-month increments.

In contrast, the deadline to submit a response to the rejection of the specimen or statement of use is pegged to the mail date of the office action. It is six months from the mail date of that office action.

For example, if the deadline to submit a suitable specimen is March 1st but the deadline to submit a response to the rejection of the statement of use is March 31st, then you must find a specimen that was used before March 1st and that specimen must be submitted in response to the rejection of the statement of use by March 31st.