Navigating the Trademark Statement of Use and Specimen Submission

Understanding the Statement of Use (SOU)

When you receive a Notice of Allowance for your trademark application, it's time to affirm that your mark is in use. The Statement of Use is a sworn declaration that your trademark is actively being used in commerce on the goods or services listed in your application. This step is essential for the final approval of your trademark.

When to File the SOU

If your trademark application was initially filed under the "use in commerce" (1A) basis, filing an SOU is not necessary. However, for applications filed with an "intent to use" (1B) basis, you must submit the SOU within six months of the Notice of Allowance issuance. Failure to do so will result in the abandonment of your application.

Required Information for SOU Filing

To file the SOU, you need to provide two key pieces of information:

1. The date when the trademark was first used in commerce.
2. A specimen showing the trademark as used in connection with the listed goods or services.

The specimen must be a clear JPEG image that matches the trademark exactly as it was initially filed. For goods, acceptable specimens include tags, labels, packaging, or displays showing the trademark. For services, specimens can be advertisements, brochures, business cards, or photographs that demonstrate the mark in use.

Specimen Guidelines for Goods and Services

• Goods: The trademark must be displayed on the actual goods, packaging, or associated displays. Examples include medication packaging or the tag of a clothing item. Invoices and business cards are generally not acceptable.
• Services: The specimen should show the mark in the context of selling or advertising the services. It must reference the type of services offered, not just the mark itself.

Extensions for Filing the SOU

If you're not yet using your trademark but have received a Notice of Allowance, you can request an extension. Each extension grants an additional six months, with a maximum of five extensions (totaling 30 months). The final SOU must be filed no later than 36 months from the Notice of Allowance date.

Fees for SOU and Extensions

As of 2008, the cost to file an SOU or an extension is a flat fee of $400 per class, which includes the USPTO fees of $100 for the SOU and $150 for the extension per class. It's important to note that these fees may have changed since then, so it's advisable to check the current rates on the USPTO's fee schedule.

Avoiding Office Actions on Specimens

To prevent office actions due to specimen issues, ensure that your specimen is an exact match to the trademark filed and is appropriate for the type of goods or services. Any discrepancies in the design, font, or images can lead to rejection.

Interesting Stats and Facts

While the process of filing an SOU and specimen might seem straightforward, many applicants encounter challenges. According to the USPTO's Performance and Accountability Report for FY 2020, the overall trademark application abandonment rate was approximately 16.5%. A portion of these abandonments is due to incorrect or insufficient SOU submissions.

Furthermore, the USPTO's Trademark Dashboard provides insights into the number of SOU filings and the common reasons for refusal. For instance, in the first quarter of FY 2021, the USPTO issued 15,580 office actions on SOU filings alone, highlighting the importance of accurate and compliant submissions.

By understanding the requirements and preparing a proper SOU and specimen, you can avoid becoming part of these statistics and move closer to securing your trademark. If you have any doubts or require assistance, it's always best to consult with a qualified trademark attorney who can guide you through the process.