For Intent to Use (1(b)) trademark applications, before the trademark can be registered, the applicant or their trademark attorney must file a Statement of Use.
Trademark applications filed based on an Intent to Use, referred to as 1(b) applications based on the section of the Lanham Act that allows intent to use as a filing basis, will not proceed to registration without filing a Statement of Use.
After 1(b) trademark applications have gone through the opposition period without an opposition being filed, the Examining Attorney will issue a Notice of Allowance. The Notice of Allowance serves two purposes. First, it lets the trademark applicant know that the trademark application will proceed to registration upon submitting a proper Statement of Use. Secondly, the Notice of Allowance starts the six month clock for the trademark applicant, or their trademark attorney, to file a Statement of Use or a six month extension of time to file a statement of use.
Above is an example of a Notice of Allowance as seen on the Trademark Status & Document Retrieval system.
Trademark applicants can file six month extensions to file a Statement of Use for a period up to three years. However, filing repeated six month extensions can be costly because each extension after the first one requires an additional $125 USPTO filing fee. If no Statement of Use or six month extension is timely filed, then the trademark application will go abandoned.
Statement of Use filings have three main requirements that the trademark applicant or their trademark lawyer must enter into the online filing system when they submit their Statement of Use. The Statement of Use must include a proper specimen, first use dates of the trademark, and a $125 USPTO filing fee per class of goods or services.
A screenshot of the USPTO Statement of Use filing page requiring a specimen and first use dates.
If you have any questions about filing a Statement of Use or the process, contact us or leave a comment below and we will try to help you out.