A trademark statement of use is a critical step in officially securing your trademark for business.
In simple terms, it’s a way to let the U.S. Patent and Trademark Office (USPTO) know that you’re actively using your trademark in commerce.
This step is essential because, in the U.S., the government fully grants the trademark rights only when you use the mark in actual business operations. Filing a trademark alone isn’t enough—you have to show that it’s part of your day-to-day business.
What makes this significant? A trademark helps you stand out from the competition by protecting your brand’s distinctive name, logo, or slogan. This means more credibility and protection for business owners.
Providing a statement of use demonstrates your commitment to your brand and demonstrates that it is a functional component of your company, not just a concept.
So, if you are planning to use your business trademark for commercial use, you need to read this blog. Here, I will cover almost everything that you need to know about the trademark declaration of use, including how to file it, what to include, and typical problems.
Additionally, after reading this article, you will be able to move confidently and successfully through each phase of the trademark procedure.
Trademark Statement Of Use: Definition
A Trademark Statement of Use (SOU) is an essential document in the trademark registration process with the U.S. Patent and Trademark Office (USPTO).
Once you’ve applied for a trademark, the SOU is the step where you confirm to the USPTO that you’re actively using your trademark in real-world business operations.
This document shows that your trademark isn’t just an idea; it’s something that’s genuinely part of your business activities.
The SOU comes into play once you’ve received a Notice of Allowance from the USPTO, which means your trademark has passed the initial approval steps. However, you cannot officially register it until you submit your Statement of Use.
In this document, you must provide evidence that proves you’re using the trademark on goods or services you are selling to customers. For instance, these be things like product packaging, labels, or website screenshots—
Filing a Statement of Use is important because, in the U.S., trademark rights are granted based on actual usage. This differs from other countries where “intent to use” might be sufficient.
If your trademark isn’t in use yet, you can file for an extension (up to five times). This gives you additional time to start using it before the SOU is due.
Once your Statement of Use is filed and approved, your trademark becomes fully registered. Additionally, you gain exclusive rights to it. This means others can’t legally use similar branding in your industry, helping protect your brand’s identity and market value.
Establishing And Maintaining Trademark Rights
Having a registered trademark doesn’t automatically grant you perpetual rights.
Instead, you must continuously demonstrate your use of the mark to establish and maintain your trademark rights.
A trademark statement of use indicates that you are utilizing the mark in commerce, thereby solidifying your legal claim.
How to File Trademark Statement of Use?
Filing a Trademark Statement of Use (SOU) is a key step toward officially registering your trademark. Filing it can seem complex, but taking it step-by-step ensures a smooth process. A successful SOU filing protects your brand and establishes it legally in the marketplace.
Here’s a simple guide on how to file it successfully:
1. Confirm Your Trademark’s Status
First, make sure you’ve received a Notice of Allowance (NOA) from the USPTO. This means your trademark application has been reviewed and is awaiting proof of commercial use.
2. Gather Evidence of Use
To file an SOU, you need to show that your trademark is actively used in business. This proof, or a “specimen,” could be product labels, packaging, website screenshots, or advertisements showing your trademark clearly in connection with the goods or services listed in your application.
3. File Your SOU Online
Go to the USPTO’s Trademark Electronic Application System (TEAS). Select “File Statement of Use” and follow the prompts. You’ll be asked to upload your specimen and pay the filing fee. This is usually around $100 per class of goods or services.
4. Wait for USPTO Review
Once submitted, the USPTO will review your SOU. If everything is in order, your trademark will move to official registration. If not, they may request additional information.
When Should You File a Trademark Statement of Use?
You should file a Trademark Statement of Use (SOU) once you’ve received a Notice of Allowance (NOA) from the U.S. Patent and Trademark Office (USPTO). The NOA signals that your trademark application has been preliminarily approved, but it won’t be fully registered until you prove the trademark is in active business use.
Generally, you have six months from the NOA date to file your SOU. If you’re not yet using the trademark in commerce, don’t worry—you can request an extension to give you extra time, up to five times (30 months total).
It’s best to file as soon as your trademark is genuinely part of your business, whether on products, services, or marketing materials.
Filing your SOU promptly not only secures your registration but also ensures your brand is protected in the market. Additionally, it gives you exclusive rights and prevents others from using a similar mark in your field.
Who Can File a Trademark Statement of Use?
A Trademark Statement of Use (SOU) can be filed by the person or business entity that owns the trademark application. If you’re the applicant who initially filed the trademark request with the U.S. Patent and Trademark Office (USPTO), you’re eligible to file the SOU once you start using the trademark in commerce.
This includes small business owners, startups, corporations, and individuals who applied with the intent to use the trademark for goods or services. If your business is already actively using the mark, you can proceed with filing the SOU as soon as you receive the Notice of Allowance from the USPTO.
However, if your business hasn’t started using the trademark in commerce yet, you may need to request an extension. Extensions allow you additional time (up to 30 months) to begin using the mark and prepare the necessary documentation.
Remember, only the original applicant—or their authorized representative—can file the SOU, keeping control of the application process.
How Much Does a Trademark Statement of Use Cost?
Filing a Trademark Statement of Use (SOU) with the U.S. Patent and Trademark Office (USPTO) has a cost associated with it. Typically, the filing fee is $100 per class of goods or services listed in your trademark application. For example, if you’re trademarking your brand for both clothing and accessories (two classes), the fee would be $200.
If your business isn’t yet ready to use the trademark in commerce, you can request an extension instead. Each extension request also costs $125 per class, and you can request up to five extensions (30 months total). This provides time to prepare for commercial use.
These fees help cover the processing and legal review by the USPTO. While it may seem like an investment, it’s worthwhile for securing exclusive rights to your brand. Once you file your SOU and it’s approved, your trademark will be fully registered, protecting your brand’s identity in the marketplace.
Why Is A Trademark Statement Of Use Important For Businesses?
Now that we understand what a trademark statement of use is, let’s explore the reasons why it is crucial for businesses:
1. Preserving Your Trademark Rights
No valid and current statement of use exists to safeguard your trademark rights, which could put them at risk if filed within specific timeframes. Failure to submit this document in time could result in the cancellation of registration for your mark and its abandonment. By regularly submitting a trademark statement of use, you actively protect your trademark and maintain your exclusive rights, ensuring that nobody else can use or infringe upon your mark.
2. Bolstering Your Legal Position
In today’s competitive business landscape, intellectual property disputes are not uncommon. Whether it’s a competitor intentionally infringing upon your mark or an innocent party unknowingly adopting a similar mark, having a well-documented trademark statement of use strengthens your legal position. It provides concrete evidence of your ownership and use of the mark, making it easier to protect your brand and enforce your rights if necessary.
3. Building Brand Credibility And Trust
A registered trademark accompanied by a valid trademark statement of use adds credibility and professionalism to your brand. As trademark registration demonstrates that your business is legitimate and serious about safeguarding its intellectual property, consumers have become more attuned to their importance and more likely to choose brands with legal protections for trademarks. A strong portfolio, including an up-to-date statement of use, will build your brand’s credibility among your target audience and foster trust between both sides.
4. Facilitating Licensing And Franchising Opportunities
Trademarks are valuable assets that can be licensed or franchised to generate additional revenue streams for your business. However, potential licensees or franchisees will only be interested in partnering with a brand that can prove its trademark rights through a valid statement of use. By maintaining an active statement of use, you open doors to business expansion opportunities, allowing your brand to reach new markets and increase its market share.
5. Strengthening Your Business Strategy
Filing a trademark statement of use is not just a legal requirement; it is also a strategic business move. Regularly reviewing and updating your statement of use forces you to assess your current branding and marketing strategies. It helps you identify areas where your mark might need improvement or expansion, allowing you to adapt your business strategy to better align with your customers’ needs and preferences. This continuous evaluation ensures that your trademark remains relevant and valuable in a continuously evolving marketplace.
Read Also: When Should You Consider Hiring A Private Detective For Your Business
6. Protecting Your Investment
Businesses invest considerable effort and financial resources into building and marketing their brands, so registering a trademark and filing a statement of use helps protect that investment by protecting those aspects that set yours apart from rival brands. Without proper protection, other businesses may attempt to profit from your success or dilute your brand’s distinctiveness, ultimately hindering your growth and profitability.
In Conclusion
In summary, a Trademark Statement of Use proves that your trademark is actively part of your business. It’s a vital step in securing full trademark rights, offering you both legal protection and the credibility that comes with a fully registered brand.
As a business owner, your brand is one of your greatest assets. Registering and filing a trademark statement of use are integral steps toward safeguarding this investment and maintaining trademark rights.
Regularly filing this crucial document establishes and maintains trademark rights while strengthening legal standing and consumer trust, expanding licensing and franchising opportunities, strengthening the overall business strategy, and protecting investment returns.
Don’t underestimate its significance; its long-term success lies within its application!
Read Also:
- Trademark Infringement: The Ongoing Intellectual Property Battle
- A Corporate Lawyer Can Help You Become a Millionaire! Here’s How
- Experienced Commercial Litigators: Resolving Business Disputes Efficiently and Effectively
0 Reply
No comments yet.