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 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.
What is a blackout period?
A blackout period is the period of time where an amendment to allege use or the statement of use cannot be filed with the Trademark Office. The blackout period is the period between the time that the examining attorney approves a trademark for publication and the date of issuance of a notice of allowance from the USPTO.
What is the deadline to submit the statement of use?
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:
- a specimen of your use; and
- a date of first use anywhere and the date of first use in commerce.
The specimen shows how you are using the trademark in commerce. For example, are you labeling it on the packaging or on the product itself? Alternatively, is the mark being used on 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?
Use in commerce of a trademark is the usage of the trademark via any channel of commerce that is regulated by the federal government. For example, the use of the trademark on an Internet website illustrates the use of the mark in commerce. The term “commerce” refers to the US constitution which gives the federal government the right to regulate commerce between the states. Since the Internet can be regulated by the federal government, any specimens derived or located on the Internet may be a proper specimen for use in commerce.
In contrast, a use anywhere is a use of the trademark in a local geographical area. For example, if you’re a Barbershop, then the use of your trademark is local to the vicinity of your customers. Nevertheless, some local Barber shops can also have a use in commerce in that they advertised their services on the Internet.
What happens after a statement of use is accepted by the USPTO?
After the statement of use is accepted by the USPTO, your trademark will be registered on the principal register in about 2 months. Your trademark will be afforded all of the rights of the trademark registration.
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.