What is the process of filing the Statement of Use?

Photo of Tomas Orsula

Written by Tomas Orsula

Senior Trademark Attorney

Filing the Statement of Use is a crucial step in finishing the registration of your US trademark. Here's the general overview of the whole process:

  1. You apply for a new trademark on the intent-to-use filing basis.
  2. The USPTO assesses your application
  3. If your mark meets all the formal requirements, it is published for oppositions.
  4. If there are no unresolved oppositions, the USPTO issues a Notice of Allowance and requests you to file the Statement of Use. You have six months to either file it or request an extension. You can request an extension a maximum of five times. You'll submit the Statement by paper or online. As a part of the submission, you'll fill out the form, pay the fees, and provide specimens of use - proof your trademark is used in the US commerce to label the goods/services you applied for (e.g. depicted on your product, packaging, website, storefront, etc.)
  5. The USPTO will examine your specimens. If there are any issues, you will receive an office action with a specimen refusal. In the refusal, the examiner will explain the reason for dismissing your specimen. To overcome the refusal, you have to submit a substitute specimen and disclaim it has been used in commerce prior to the deadline specified in the office action. Submission of a substitute specimen is not subject to any cost.
  6. If the specimen is only insufficient for one of your classes, your trademark application can still progress for the rest of them.
  7. Once the Statement is approved and any outstanding issues are resolved, the USPTO will register the trademark, and you'll receive a registration certificate.
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