Trademark Information

When you receive a Notice of Allowance (“NOA”) from the USPTO in an Intent-to-Use trademark application, you are required to submit a Statement of Use (“SOU”), or seek an extension of time to file an SOU, within 6 months of the date of the NOA.

 

The purpose of the SOU is to provide evidence to the USPTO that you are using the mark in connection with the goods/services identified in the application and to document.  You must submit three things with the SOU in connection with each class of goods/services in the application: (a) a specimen of use, (b) a date of first use, and (c) a date of first use in commerce.  For example, if the application includes two classes of goods/services, you will need to provide two specimens and two set of dates of first use and first use in commerce.

 

The following is a guide to providing a specimen of use, dates of first use, and seeking extensions of time.  Please contact us if you have additional questions. 

 

Specimens of Use

 

The specimen of use is a photograph or image proving that you are actively using the trademark. If your trademark is for a service, the specimen of use is most commonly a webpage, brochure, or ad showing the trademark and offering the services that are described in the trademark application.  If the trademark is for goods (products), the specimen of use is commonly a photograph showing the trademark on the goods or packaging for the goods.

 

Due to an increase in the submission of fraudulent specimen of use, the USPTO may reject a specimen that appears to have been digitally created.  For example, a PDF rendering of product packaging artwork is unlikely to be accepted.  Providing a photograph of an actual sample of the product or packaging is best practice.  Where possible, we recommend having the hand or shoe of the person taking the photo appear photograph. 

 

Dates of First Use

 

The date of first use is the earliest date on which you sold goods bearing the trademark or, in the case of services, provided services after using the mark in connection with the advertising of such services.

 

The date of first use in commerce has a very similar definition to the date of first use, except that it is the date on which the trademark was first used to identify a product or service “in a way that can be lawfully regulated by US Congress.”  In the case of goods, this typically is the date on which you first sold goods bearing the trademark to an out-of-state or international customer.  In the case of services, the date of first use in commerce is date on which you first provided services to an out-of-state or international customer after using the mark in connection with the advertising of such services. 

 

In the event that the first time goods were sold (or services provided) under the trademark was to an out-of-state customer, then the date of first use and date of first use in commerce will be the same. 

 

There are some services, such as providing lodging, that have been deemed, by their nature, to involve interstate commerce.  Accordingly, if the description of goods/services for the application consists of such services, providing services to an in-state customer may be sufficient to establish a date of first use in commerce.  Please contact us to discuss if this may be the case with your application. 

 

If you cannot determine the precise date of first use, it is acceptable to provide a month and year.  We will use the last day of that month as the date of first use. 

 

Extensions of Time 

 

If you do not expect to have sold goods (or offered services) under the mark and to an out-of-state customer on or before the initial 6-month deadline, it will be necessary to submit a Request for Extension of Time on or before the initial deadline.  In order to maintain the application, it will be necessary to continue to seek extensions of time every 6 months.  No more than 5 consecutive 6-month extensions can be filed.  In other words, even if extensions are filed, an SOU must be filed within 36 months of the date of the NOA.  Beginning with the second extension, it will be necessary to provide an explanation of the efforts made to use the trademark in commerce (e.g. product research and development, preparing for manufacturing, promotional activities, etc.).

 

In the case of a multi-class application in which your have use of the trademark in commerce with one or more classes, but not with other classes, please contact us.  Depending upon the circumstances, we may recommend dividing the application.