A Statement of Use is required before an “intent to use” trademark application can proceed to trademark registration
Flow chart of the Intent to Use trademark application process and timeline
When a trademark owner applies for a federal trademark registration with the United States Patent and Trademark Office (USPTO), they have two options to select as their filing basis. They can file the application based on “use in commerce” or based on a “bona fide intent to use” the trademark in commerce. A simple way for trademark applicants to decide which filing basis is best for them, is to answer the question “Am I already using the trademark or not?” If yes, they should file based on use. If no, they should file based on an intent to use the trademark.
Screenshot of trademark application process where the applicant chooses 1(a), based on use, or 1(b) based on an intent to use
When a trademark applicant files based on an intent to use a trademark, the application process begins the same way as a used based application, except they do not have to submit a specimen at the time they file the application. If/when the examining attorney approves the application, and after it is published for thirty days, the USPTO will issue what is called a Notice of Allowance. A Notice of Allowance basically states the trademark is allowable and will become a registered trademark if and when the trademark owner shows proof that they are using the trademark in commerce for the applied for goods and/or services. The way to show use in commerce, for an intent to use trademark application, is by submitting a Statement of Use.
After the Notice of Allowance is issued, the trademark applicant has six months to either a) file a Statement of Use; or b) submit a six month extension of time to file a Statement of Use. The trademark applicant can file six month extensions for up to three years before submitting their Statement of Use. However, if no Statement of Use is filed after three years, or the applicant does not file timely six month extensions, then the trademark application will die and be considered an abandoned trademark application.
Screenshot of the Statement of Use filing portal
A Statement of Use can be filed online and requires a few things from the trademark applicant. Most importantly, a Statement of Use requires the trademark applicant to submit a specimen for each class of good or services applied for. Whereas a use in commerce based application requires a specimen for each class of goods and services to be submitted at the start of the application process, an intent to use application requires it at the end. In addition to submitting a specimen, the trademark owner must also confirm the date the trademark was first used and when the trademark was first used in commerce. Assuming there are no issues with the Statement of Use, the application will be registered with the USPTO.
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