As a business owner, you’ve likely researched and considered many options on how to protect your brand. One of these options is the trademark statement of use (SOU), which allows for the registration of specific trademarks and brand names. You need to file this form if you’ve already registered a trademark but haven’t been using it for some time.
Even if you are actively using your brand name, there are numerous reasons why you should file an SOU. This article is for you if you have yet to file your trademark statement of use. It delves into what an SOU is and provides a step-by-step guide to filing a trademark statement of use.
What Is A Trademark Statement Of Use, And Why Should You File One?
A trademark statement of use is a document you file with the U.S. Patent and Trademark Office (USPTO) to acknowledge that you’re using your trademark in commerce. Therefore, it’s eligible for registration. This is an essential step in your intellectual property journey for your business. It’s not enough to register a trademark; you also have to show that you’re using it in ways that make it distinctive from other marks. If you don’t demonstrate this, the USPTO will cancel your registration.
Filing a trademark statement of use helps you avoid canceling your trademark rights. This is because the USPTO won’t allow an application to be abandoned if the owner has filed a statement of use. Moreover, filing a statement of use gives your trademark more legitimacy. Even though it doesn’t create any additional rights for you, it shows that you’re serious about using your mark in commerce and that you’re not just trying to get something for nothing by applying without ever intending to use it.
A Step-By-Step Guide To Filing A Trademark Statement Of Use
Now that you know why it’s crucial to file a trademark statement of use, this is a step-by-step guide to filing a trademark statement of use.
Confirm Your Trademark Is Approved
Before you file a statement of use, ensure your trademark is still in good standing and not on any list of rejected marks. You can do this by conducting a trademark search or consulting with an attorney. If the mark has been previously rejected, you may still be able to put it back into play with an Intent-to-Use (ITU) application.
Suppose the mark was previously approved but no longer meets the standards for use, for example, if it’s too similar to another existing trademark. Then you need to file a new application for trademark registration with the USPTO and restart their review process from scratch, including responding to all comments made during that initial review process.
Confirm You Have A Statement Of Use Form Filled Out
The next step is to confirm you have a statement of use form filled out. This document proves that you’ve started using your trademark in commerce and will continue to do so in the future. Hence, it’s crucial to have it filled out.
The USPTO requires that you submit a statement of use within six months after receiving an ITU certificate. To file a statement of use, you need to fill out the form and submit it along with the payment for processing fees, which range from USD$100-USD$200 depending upon whether you’re filing electronically or on paper. You can also hire an attorney or agent specializing in trademark law who can help guide you through this process.
However, it’s important to note that hiring an attorney or agent isn’t necessary unless they specialize in assisting clients with filing statements of use at the USPTO because they can often charge hundreds of dollars per hour for their services.
Confirm The Mark Is In Use And Not Merely Intended To Be Used
It’s essential to confirm that the mark is in continuous use. A mark does not need to be used everywhere, but you should use it in connection with the goods or services listed in your application. It also needs to be used lawfully. In other words, you cannot use your trademark if it has been registered by someone else first or if you’ve adopted it as a trading name under state law.
A trademark can be used before registration with an ITU application for up to five years after filing without incurring additional fees or penalties. After five years from the filing date, you must file another ITU statement of use before being able to register your trademark officially as a federal trademark according to USPTO rules and regulations.
Confirm The Mark Can Be Adequately Represented In A Specimen
Next, you’ll want to confirm that you can adequately represent the mark in a specimen (examples of use). A specimen is a physical representation of what the trademark looks like. The purpose of a specimen is to demonstrate that the registered trademark is used in commerce and that it doesn’t look like something else.
You’ll need to submit an example of how you currently use the mark on your goods or services. This can include the product, packaging, business cards, websites, and other marketing materials. The goal is to show that people buy from you because they’ve seen your trademark. It is worth noting that a specimen does not have to be an actual physical item; it can also be a digital image as long as it shows how the mark is used in commerce today.
Confirm That Any Activity Related To The Mark Doesn’t Violate The Lanham Act
It is prohibited by the Lanham Act to employ a mark that can be mistaken for another trademark. Remember that the use of a mark that is likely to impair the distinctiveness of another brand is likewise prohibited by the law. In addition, the law bans the use of a trademark that is likely to degrade another one.
If any of your activities related to your trademark violate these prohibitions, then you could be denied registration on your statement of use and even lose an existing trademark registration. So always be careful when choosing what types of activity will be associated with your trademark or service marks to avoid violating any laws or regulations governing those same types of activity.
Prepare Fee For Statement Of Use Filing
Before you file your statement of use, you need to check the fee schedule and ensure that the amount due is correct. You’ll also need to verify that the classes of goods or services in your mark meet the requirements for filing an SOU.
If you have more than one mark, then you must pay additional fees depending on how many marks are being used together.
Conclusion
Filing a trademark statement of use isn’t a complicated process. However, you must submit the form on time or risk losing your rights to the mark. By doing so, you’re protecting your brand’s intellectual property in the best way possible.
