A trademark registration starts with preparing an trademark application where the applicant should include the details of what they wish to register. They may also come with an illustration of the mark, plus the terms and classes to register.
An important thing to note is that during the trademark application, you don’t have to use the trademark in commerce immediately—an intention or good faith to use it in the future is enough. This filing is called trademark registration with an intent-to-use (ITU) basis. One advantage of filing an application on an ITU is your right to the trademark can be prioritized over someone if any legal conflict develops.
The United States Patent and Trademark Office (USPTO) shall review your application once received online or by mail. If they find no issues, the IPO will process it and publish it in their Trademarks Journal for 30 days for opposition purposes.
If no opposition arises, the USPTO shall issue a Notice of Allowance (NOA). You have six months from this date to use your trademark in connection to the list of goods and services you registered. If you can’t use your trademark within six months, filing a request for an extension of time will be your next course.
A request for an extension of time is a sworn statement showing that you have a bonafide intention to use your trademark in commerce but need extra time. An additional six months to meet the purposes of a) using your trademark in commerce, and b) submitting a Statement of Use (SOU) with the office.
Statement of Use
Similar to a request for an extension of time, an SOU is also a sworn statement filed with the USPTO. It must be adequately complied with before its expiration (within six months from the date of NOA issuance or before an extension of time for filing a statement of use expires). Otherwise, you may need a statement of use extension.
At the minimum, an SOU must include:
- the USD$100 fee required for payment;
- at least one specimen as proof that the trademark is used in commerce; and
- the verified statement signed by the applicant and their representative that the trademark is already used in commerce.
If the SOU is accepted, the USPTO can finally issue you a certificate, allowing you to reap the benefits of trademark registration. This includes defending your trademark against counterfeits and infringement by others.
SOU Extension
An SOU Extension is the one last extension your trademark application needs. That’s because you can view it as a remedy for your SOU deficiency. As mentioned earlier, accepting your SOU is the last step before a successful registration on a trademark application on an ITU basis. Thus, ensuring that it has no deficiency is crucial.
You’ll only have the option of filing a new trademark application with further fees if you can’t correct your SOU within the given period because such an application shall be considered abandoned. However, you still have the option to revive it two months after the Notice of Abandonment issuance.
There are four reasons for the refusal of your SOU. These include deficiencies in:
1. Specimens And Dates Of Use In Commerce
A specimen is an example of how your trademark is used in connection to the goods and services you offer. Some examples of goods are containers, tags, or a sample invoice for the good or service. As for services, those accepted are brochures, business cards, and pictures of business signages. The USPTO requires at least one specimen per class included in the SOU.
Meanwhile, the date of use refers to the first usage of the mark in commerce or in connection with the listed goods or services. It can also be referred to as dates of first use by the USPTO.
Failure to provide a specimen or any amendment to the date of use gives the USPTO a basis for refusing registration.
2. Verification
The SOU should also contain verified statements, one of which alleges that the mark is used in commerce. Anyone who owns the application or registration or a person authorized by the owner to verify facts should also sign the statement. This can be any of the following:
• A person authorized to bind the owner, such as a general partner of a partnership or corporate officer;
• A person who has firsthand knowledge of the facts and the authority to act on behalf of the owner; or
• A qualified U.S. attorney with the owner’s power of attorney.
The applicant must provide a substitute verified statement within the deadline if this verified statement is unsigned or signed incorrectly. If not, the registration shall be considered abandoned.
3. Filing By Owner
The SOU must also be filed by the trademark owner at the time of filing. Otherwise, the USPTO may refuse registration. Suppose the SOU is filed by another person and the filing period has expired. In that case, no substitute SOU shall be accepted by the USTPO.
4. Filing Fee For At Least A Single Class
The filing fee must be paid for at least a single class before the statutory period for filing a statement of use expires. If not, then the application shall be considered abandoned.
All four instances may benefit from requesting one last extension to file your SOU with the USPTO. If you want to know more about this process, consult with an experienced trademark attorney in your area.
When Can an SOU Extension Be Made?
The applicant can file an SOU Extension during the filing of the SOU or at a later date. If filed after the SOU, there should be time remaining in the current six-month period in which it was filed. Doing so would give you more time to comply with the statutory requirements for filing the SOU.
What To Do If The SOU Refusal Is Questionable
An examining attorney who refuses registration on the four grounds mentioned must issue a regular office action within a six-month response period. This action is an official letter listing any legal problems with your trademark application and the trademark itself. You now have time to prove that your SOU complies with the statutory requirements on or before the deadline for filing it.
Conclusion
Filing for a trademark SOU Extension sounds like a complex process. That’s why it’s essential to understand when you might need one. If there are other reasons why you might need it, ensure you check with a qualified trademark attorney before filing your application.
