The applicant may file a statement of use only when the mark has been in use in commerce on or in connection with all the goods/services specified in the notice of allowance, unless the applicant files a request to divide for those goods/services not yet in use in commerce. 37 C.F.R. §2.88(a)(2). See TMEP §§1110–1110.11(a) regarding requests to divide.
If the applicant files a statement of use for some of the goods/services identified in the notice of allowance, and a request for an extension of time to file a statement of use for other goods/services that are identified in the notice of allowance, but does not file a request to divide, the ITU/Divisional Unit will issue an Office action granting the applicant additional time to either: (1) file a request to divide, or (2) file an amendment to delete from the application the goods/services that are not in use. If the applicant met the minimum requirements for filing the statement of use and extension request before expiration of the deadline for filing the statement of use, the applicant may file the request to divide after expiration of the statutory deadline for filing the statement of use. If the applicant does not file an acceptable request to divide within the time specified in the Office action, the goods/services that are not covered by the statement of use will be deleted from the application.
See TMEP §1109.13 regarding examination of a statement of use that omits, but does not expressly delete, some of the goods/services identified in the notice of allowance.
The statement of use must be filed within six months after the issuance date of the notice of allowance or within a previously granted extension of time for filing a statement of use. 37 C.F.R. §2.88(a)(1); see 15 U.S.C. §1051(d)(1)-(2). See TMEP §§1108–1108.05 regarding extension requests.
If the applicant does not timely file a statement of use within this time period, the application is abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §2.88(k). When the failure to timely file a statement of use is unintentional, the applicant may file a petition to revive if it is within the deadlines listed in 37 C.F.R. §2.66(a). See TMEP §§1714–1714.01(g).
A statement of use filed through TEAS is considered to have been filed on the date the USPTO receives the electronic submission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or federal holiday within the District of Columbia. 37 C.F.R. §2.195(a);TMEP §303.01.
Any statement of use filed after the examining attorney approves the mark for publication but before the issuance of the notice of allowance is untimely and will not be considered. 37 C.F.R. §2.88(a)(1). The USPTO will refund the filing fee. 37 C.F.R. §2.88(a); see TMEP §1104.03(b), (c).
A statement of use filed on paper, if permitted (see TMEP §301.02), is considered timely if it is received in the USPTO by the due date or mailed by the due date in accordance with 37 C.F.R. §2.197 (certificate of mailing) or 37 C.F.R. §2.198 (Priority Mail Express®). See TMEP §§305.02-305.02(h) regarding certificate of mailing procedures and §§305.03-305.03(e) regarding Priority Mail Express®.
Applicants must file a statement of use through the Trademark Electronic Application System (TEAS) at https://teas.uspto.gov, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions.
Trademarks and Service Marks
A complete statement of use must include the following elements:
Collective Marks
A complete statement of use must include the following elements:
Certification Marks
A complete statement of use must include the following elements:
If the statement of use is timely and complies with the minimum filing requirements of 37 C.F.R. §2.88(c), the ITU staff will refer it to the examining attorney for examination on the merits. If available, the same examining attorney who initially examined the application will examine the statement of use. Examination of the statement of use is sometimes referred to as "second examination."
The examining attorney will review the statement of use to confirm that it meets the requirements of the Act and the rules. See TMEP §1109.06 for the requirements for a complete statement of use.
The examining attorney will examine the specimen to confirm that it shows appropriate use as a mark on or in connection with the goods/services/collective membership organization specified in the statement of use (see TMEP §§1202–1202.17(e)(vi) regarding use of subject matter as a trademark, §§1301.02–1301.02(f) regarding use of matter as a service mark, and §1306.04(b)(ii) regarding use of matter as a certification mark). The examining attorney will also determine whether the mark shown on the drawing is a substantially exact representation of the mark as used on the specimen (see TMEP §§807.12(a)–(a)(iii), 1109.12).
If the applicant has complied with the statutory requirements for a statement of use before the expiration of the deadline for filing the statement of use, the applicant may amend or correct the statement of use during examination. See TMEP §1109.16(a)–(d) regarding compliance with statutory requirements before the expiration of the time for filing the statement of use.
If the examining attorney finds the statement of use acceptable, the USPTO will notify the applicant that the statement of use is approved. See TMEP §1109.18 regarding approval of the statement of use. The USPTO will then issue the registration and publish notice of the registration in the Trademark Official Gazette. The application is not subject to opposition again.
See TMEP §1109.15 regarding statements of use filed on paper for multiple-class applications and §§1109.16–1109.16(d) regarding the issuance of Office actions and correction of defects in a statement of use.
Generally, in examining the statement of use, the USPTO will issue only requirements or refusals concerning matters related to the statement of use. The examining attorney should not make a requirement or refusal concerning matters that could or should have been raised during initial examination, unless the failure to do so in initial examination constitutes a "clear error;" i.e., would result in issuance of a registration in violation of the Act or applicable rules. See TMEP §706.01 regarding "clear error."
If the examining attorney determines that he or she must make a refusal or requirement that could or should have been made during initial examination of the application, the examining attorney must consult the managing or senior attorney before taking action. This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.
The examining attorney must act on all new issues arising in the examination of the statement of use. For example:
The applicant may also submit amendments to the application with the statement of use. Such amendments will be examined according to the same standards used during initial examination. If an amendment is not acceptable, and thus raises a new issue, the examining attorney will inform the applicant of the reason(s) why the amendment(s) is unacceptable and of any defect(s) that can be corrected to make the amendment acceptable.
Generally, the USPTO will not conduct a search for conflicting marks or issue any refusals under §2(d) of the Act during examination of the statement of use. However, if the examining attorney determines that, based on use on the specimen, for example, a second search is necessary, the examining attorney will conduct a second search and take any action that is appropriate.
A verified statement that "the mark is in use in commerce" is a minimum requirement that must be satisfied before the expiration of the statutory period for filing the statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(c)(3). If the examining attorney determines, before taking an action in connection with the statement of use, that the verified statement of use in commerce was omitted as of the filing date, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.
An application that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, is considered to be substantially in compliance with the minimum filing requirements under 37 C.F.R. §2.88(c)(3). In re Carnicon Dev. Co., 34 USPQ2d 1541 (Comm’r Pats. 1992); see also In re Conservation Tech. Inc., 25 USPQ2d 1079 (Comm’r Pats. 1992). Thus, if the applicant files a statement of use containing a verified date of first use in commerce on or before the expiration of the period for filing the statement of use, the applicant has met the minimum filing requirements. The examining attorney must require a verified statement that the "mark is in use in commerce" before approving the statement of use. This statement may be filed after expiration of the deadline for filing the statement of use, within the period for response to the examining attorney’s Office action.
An applicant is not required to specify the method of use or the type of commerce in which a mark is used. TMEP §§901.03, 905.
The statement of use must include the dates of first use of the mark and first use of the mark in commerce on or in connection with the goods/services/collective membership organization specified in the notice of allowance. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1)(iii). The date of first use in commerce may not be earlier than the date of first use anywhere. TMEP §903.03. In addition, the dates of use may not be after the date the statement of use was signed, because current use of the mark must be properly alleged; an applicant may not allege use that has not yet occurred. See 37 C.F.R. §2.88(b)(1)(ii) ); see also TMEP §§903.04 (regarding amending dates of use) and §903.06(a) (regarding discrepancies between dates of use and date of execution).
Where the applicant claims a §1(a) filing basis for some of the goods/services and/or the collective membership organization and a §1(b) filing basis for other goods/services and/or the collective membership organization, the statement of use must include dates of use for the §1(b) goods/services/collective membership organization covered by the notice of allowance. See 37 C.F.R. §2.86(a)(3), (b)(3). See TMEP §903.08 regarding applications in which more than one date is specified for a particular class.
Setting forth the dates of use is not a minimum filing requirement that must be met before the application will be referred to the examining attorney. If the dates of use are omitted from the statement of use, but the statement that "the mark is in use in commerce" is included, the dates may be supplied after the expiration of the statutory period for filing the statement of use. The applicant may also amend or correct the dates of use after the expiration of the deadline for filing the statement of use, if the applicant meets the requirements of 37 C.F.R. §2.71(c)(2). Any amendment to the dates of use must be verified. 37 C.F.R. §2.71(c).
The applicant must state dates of use for each class. 37 C.F.R. §2.86(a)(3), (b)(3). The dates of first use for each class must apply to at least one item in the class but do not have to apply to more than one item. 37 C.F.R. §2.88(b)(1)(iii). However, the applicant must have used the mark in commerce on all items listed in the notice of allowance before filing the statement of use, unless the applicant files a request to divide. 37 C.F.R. §2.88(a)(2); TMEP §1109.03. See TMEP §1110.07 regarding the division of an application in which a statement of use is due.
While the dates of use may be supplied after expiration of the statutory filing period, valid use of the mark in commerce on or in connection with all the goods/services/collective membership organization in the application must be made before the expiration of the statutory filing period. See 37 C.F.R. §2.71(c)(2). If the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use, the examining attorney must refuse registration because the mark was not in use within the time permitted, and also inform the applicant that the application is deemed abandoned. When refusing registration on this ground, the examining attorney must issue an Office action that includes a three-month response clause. See TMEP §§705.08, 1109.16(b).
The examining attorney must examine the specimens to confirm that they show use of the subject matter as a mark on or in connection with the goods/services identified in the statement of use. See TMEP §§1202–1202.17(e)(vi) regarding use of subject matter as a trademark and §§1301.02–1301.02(f) regarding use of matter as a service mark. The examining attorney must also determine whether the mark as used on the specimens is a substantially exact representation of the mark on the drawing. See TMEP §§807.12(a)–(a)(iii), 1109.12. The examining attorney must issue requirements and refusals, as appropriate, based on the examination of the specimens, subject to the same standards that govern the examination of specimens in a §1(a) application. TMEP §§904–904.07(b).
The submission of at least one specimen with a statement of use is a minimum filing requirement. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(2); In re Campbell, 33 USPQ2d 1055 (Comm’r Pats. 1993). If the examining attorney determines, before taking an action regarding the statement of use, that no specimen was submitted with the statement of use, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.
In a multiple-class application, the applicant must submit one specimen for each class of goods/services in the statement of use before the statement of use may be approved. 37 C.F.R. §§2.86(b), 2.88(b)(2). However, only one specimen for one class is needed to comply with the minimum filing requirements. If at least one specimen is filed within the time permitted for filing the statement of use, the applicant may submit specimen(s) for the other class(es) after the expiration of the statutory filing period, if the applicant verifies that the additional specimen(s) was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b).
If the applicant files at least one specimen with the statement of use, but the specimen is unacceptable, the applicant may provide a substitute specimen after the expiration of the time permitted for filing the statement of use, provided that the applicant verifies that the substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use. 37 C.F.R. §2.59(b). If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline, the examining attorney must refuse registration because the applicant failed to make use of the mark within the time permitted, and inform the applicant that the application is deemed abandoned. The examining attorney must issue a regular Office action with a three-month response clause. TMEP §§705.08, 1109.16(b). See TMEP §1108.03 regarding the filing of an "insurance" request for an extension of time to file a statement of use to gain additional time to make proper use of the mark.
If the dates of first use change as a result of the submission of a new specimen, the applicant must amend the dates of use in the statement of use. The amendment must be supported by an affidavit or declaration. 37 C.F.R. §2.71(c); TMEP §1109.09(a).
See TMEP §904.02(a) regarding electronically filed specimens.
Review by the ITU/Divisional Unit
Section 1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1), requires that "the applicant shall file ... a verified statement that the mark is in use in commerce ..." within six months of the notice of allowance, or within a previously granted extension of time to file a statement of use. The party filing the statement of use must be the owner of the mark at the time of filing. This is a statutory requirement that must be satisfied before the expiration of the deadline for filing the statement of use. In re Colombo, Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).
If the party who files a statement of use was the owner of the mark at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use. However, if the party who files a statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the application is abandoned.
The question of whether the statement of use was filed by the owner is determined by the ITU/Divisional Unit. If a statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title. If the party who filed the statement of use was the owner at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use. See 37 C.F.R. §§3.71(d), 3.73(b). To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Recordation Branch, and include a statement in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use. 37 C.F.R. §3.73(b)(1); TMEP §502.01.
If the applicant does not establish that the party who filed the statement of use was the owner of the application at the time of filing, the ITU/Divisional Unit will abandon the application. The true owner may then file a petition to revive within the deadlines specified in 37 C.F.R. §2.66(a), accompanied by either a substitute statement of use or request for extension of time to file a statement of use, provided that granting the petition would not extend the period for filing the statement of use beyond thirty-six months after the issuance date of the notice of allowance. See TMEP §1714.01(b) regarding the requirements for petitions to revive.
If a statement of use is filed by the owner of the mark, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors.
Review by Examining Attorney
If an examining attorney determines, before taking an action in connection with the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney should return the statement of use to the ITU/Divisional Unit for appropriate action.
If the examining attorney determines, after taking an action regarding the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney must require the applicant to submit evidence to establish chain of title, as discussed above. If the party who filed the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the examining attorney must refuse registration because no acceptable statement of use was filed within the time permitted, and inform the applicant that the application is deemed abandoned. When refusing registration on this ground, the examining attorney must issue a regular Office action with a three-month response clause. See TMEP §§705.08, 1109.16(b).
The requirement that a statement of use include a signed verification or declaration is a minimum filing requirement. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(3); In re Kinsman, 33 USPQ2d 1057 (Comm’r Pats. 1993).
If, before taking an action in connection with the statement of use, the examining attorney determines that the statement of use does not include a signed verification or declaration, the examining attorney should return the application to the ITU/Divisional Unit for appropriate action.
The verification must be properly signed. See 37 C.F.R. §2.88(b)(1). See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding who may sign a verification. Anyone who can verify the initial application may verify the statement of use. See TMEP §611.03(a).
The examining attorney must review the verified statement of use to confirm that it conforms to the requirements of the Act and the rules. The verified statement must include an allegation that the applicant believes it is the owner of the mark, and a verification of the dates of use and identification of the goods/services. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1). See TMEP §1109.10 regarding ownership, §1109.09(a) regarding dates of use, and §1109.13 regarding the identification of goods/services.
The averment of ownership is an essential element of the verification. 37 C.F.R. §2.88(b)(1)(i). If it is omitted, the examining attorney must require the applicant to submit a verified statement that the applicant is the owner of the mark. This statement may be submitted after expiration of the time for filing the statement of use.
If the statement of use was executed before the stated dates of use, the examining attorney must require that the statement be re-executed. See TMEP §903.06(a) regarding apparent discrepancies between dates of use and execution dates, and §903.04 and §1109.09(a) regarding amendment of the dates of use. If the statement of use is filed more than one year after the date of execution, the examining attorney will require a substitute verification or declaration under 37 C.F.R. §2.20 stating that the mark is still in use in commerce. See 37 C.F.R. §2.88(k); TMEP §804.03.
See TMEP §611.01(c) regarding signature of documents filed electronically through the Trademark Electronic Application System (TEAS).
Under 37 C.F.R. §2.51(b), the drawing in an intent-to-use application must be a substantially exact representation of the mark as intended to be used and as actually used upon filing the allegation of use. An applicant may not amend the mark in a drawing if the amendment is a material alteration of the mark on the drawing originally submitted with the application. 37 C.F.R. §2.72(b)(2); TMEP §§807.13(a), 807.14–807.14(f). Also, the mark in the drawing must agree with the mark as used on the specimen(s). TMEP §807.12(a)–(a)(iii). The same standards that apply to §1(a) applications for determining whether a specimen supports use of the mark and whether an amendment to the mark may be permitted also apply in the examination of the statement of use.
Therefore, if the mark in the drawing filed with the application is not a substantially exact representation of the mark as used on the specimen, the examining attorney must require: (1) either submission of a new specimen or an amendment of the mark in the drawing, if the amendment of the mark would not be a material alteration of the mark on the original drawing; or (2) submission of a new specimen, if the amendment of the mark would be a material alteration of the mark on the original drawing. 37 C.F.R. §2.72(b)(2).
The statement of use must either list or incorporate by reference the goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1)(ii). The goods/services specified in the statement of use must conform to the goods/services identified in the notice of allowance. 37 C.F.R. §2.88(i)(1). To incorporate the goods/services in the notice of allowance by reference, the applicant may elect the TEAS form option that states that "the mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed in the application or Notice of Allowance or as subsequently modified for this specific class." The form requires the applicant to designate the goods/services for each class for which use is being asserted.
If the applicant omits any goods/services that were listed in the notice of allowance, the ITU/Divisional Unit will delete these goods/services from the application. The applicant may not thereafter reinsert the deleted goods/services. 37 C.F.R. §2.88(i)(2). In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing a statement of use for the omitted goods/services.
For a permitted paper filing (see TMEP §301.02), if the applicant fails to identify or incorporate by reference any goods or services, or if the applicant designates all the goods/services as not in use, the USPTO will permit applicant to correct the mistake. The ITU staff will issue a letter noting that no goods or services were specified or incorporated by reference in the statement of use, and granting the applicant thirty days in which to submit a verified statement clarifying the goods/services.
If the mark published in the wrong class of the goods/services, the examining attorney must ensure that the classification is corrected. This may be done in an examiner’s amendment without prior approval by the applicant (see TMEP §707.02). Republication is not required.
If class(es) are added to the application after the filing of the statement of use, the examining attorney must require payment of the fee(s) for filing the statement of use for the added class(es), in addition to the fee(s) required by 37 C.F.R. §2.6(a)(1) for adding a class(es) to the application. TMEP §1403.02(c).
