What is a trademark statement of use, and why do you need it?

What is a trademark statement of use, and why do you need it?

  • 05 April, 2024
  • Nyall Engfield

The trademark Statement of Use (SOU) is a pivotal document in the world of trademarks that acts as the bridge between the intent to use a mark and its actual use in commerce. This narrative unveils the essence of the SOU, its significance, and why it's indispensable for protecting the soul of your brand: its trademark.

A trademark statement of use is a verified statement that an applicant files in the Patent and Trademark Office, specifying that the mark is in use in commerce. This statement should specify the date of the applicant's first use of the mark in commerce and the goods or services on or in connection with which the mark is used in commerce § 1051. Application for registration; verification.

The Gateway to Trademark Registration: Understanding the Statement of Use

At its core, the Statement of Use is a declaration. It's your bold statement to the United States Patent and Trademark Office (USPTO) and to the world that your mark is not just a concept but a living, breathing symbol actively used in the marketplace. Filed after your initial application under an "Intent-to-Use" basis, the SOU is the critical step that breathes life into your trademark application, turning potential into reality.

The SOU is more than just paperwork; it's a narrative of your brand's journey into the commercial world. It requires concrete evidence of your trademark in action: on your products, packaging, or as part of the services you offer. This evidence, or "specimen," showcases your trademark as it's seen by your customers, proving that your brand is not just an idea—it's a participant in the economic symphony.

The legal basis for the in-use requirement for US trademarks is rooted in the principle that trademark rights in the United States are based on actual use, and are confirmed by registration, rather than based on registration. This is because the United States is a "first-to-use" jurisdiction, meaning that the individual or entity that uses a mark, prior to another's use or application, obtains rights in that mark, regardless of whether that first user ever pursues a registration 

Why Your Brand Needs the Statement of Use

  1. Legal Protection Becomes Tangible: The SOU transforms your trademark from an intention to a fully protected asset. Upon acceptance, it affords your mark the full shield of trademark law, warding off potential infringers and ensuring that your brand identity is uniquely yours. This legal armor is crucial in a world where brand confusion can dilute your market presence and erode customer trust.

  2. Market Presence and Brand Integrity: Filing the SOU is a declaration of your brand's active engagement in the marketplace. It signifies to competitors, customers, and the USPTO alike that your brand is not just a placeholder but a player. This active presence bolsters your brand's integrity, reassuring customers of your commitment to quality and consistency under the banner of your trademark.

  3. The Foundation for Nationwide Recognition: With the filing and acceptance of the SOU, your trademark gains nationwide protection, a significant advantage over unregistered or state-registered marks. This wide-reaching umbrella ensures that your brand can grow, expand, and thrive across state lines without fear of dilution or infringement.

  4. A Strategic Asset in Your Intellectual Property Portfolio: The SOU, and the trademark registration it completes, is not just a legal formality. It's a strategic asset in your broader intellectual property portfolio, offering a competitive edge in your sector. It serves as a tangible proof of your brand's innovation and distinctiveness, potentially increasing your business valuation and appeal to investors.

Actual Use vs. Analogous Use

There are two different standards of use depending on whether the issue is the kind of use which will support the validity of a trademark registration, termed actual use, or which will establish priority of use over a rival which results in ownership of the disputed mark, called analogous use. To be a basis for federal registration as a trademark, a mark must actually be used on or in connection with the goods or services IOW, LLC v. Breus, 425 F. Supp. 3d 1175.

The doctrine of analogous use, where it applies, eases the technical requirements for trademarks and service marks in cases where a claimant asserts priority on the basis of earlier analogous use of the mark. However, the doctrine has not been stretched so far as to obviate the requirement that a party show eventual actual use for purposes of registration IOW, LLC v. Breus, 425 F. Supp. 3d 1175.

Crafting Your Statement of Use: Key Considerations

The journey to filing a Statement of Use is meticulous, requiring attention to detail and strategic foresight. Here's what to keep in mind:

  • Timeliness is Paramount: The USPTO provides a window after the issuance of a Notice of Allowance (NOA) within which to file your SOU. Miss this, and you could be back to square one. Extensions are available, but they're not infinite.

  • Authenticity in Your Specimen: Your submitted specimen must be a true representation of how your mark is used in commerce. Whether it's a label, a website screenshot, or advertising materials, authenticity is key. This is where your trademark's story is told, make it compelling.

  • Precision in Use: The SOU must accurately reflect the goods and services listed in your application. Any deviation could jeopardize the acceptance of your statement, narrowing the scope of protection or leading to outright rejection.

Avoiding Common Pitfalls

The road to trademark registration is laden with potential pitfalls. The most common mistake? Rushing. In the eagerness to secure trademark protection, businesses might submit an SOU prematurely, with specimens that don't adequately demonstrate use in commerce. Another common error is misunderstanding the breadth of protection, assuming that a trademark in one class protects all aspects of a business.

If you are not currently using the trademark, extensions of time are available, for six months at a time, for up to three years (5 extensions) from the Notice of Allowance date.

The SOU: Your Brand's Launchpad

In essence, the Statement of Use is more than a requirement—it's your brand's launchpad into the marketplace, offering protection, prestige, and promise. It solidifies your commitment to your brand, ensuring that your mark not only signifies your products or services but embodies the quality, trust, and distinctiveness your business stands for.

It is important to note that while registration confers certain legal rights (logically requiring a higher showing of actual use), registration does not create a mark or confer ownership; only use in the marketplace can establish a mark. Without federal registration, a valid trademark may still be used in commerce. Federal registration, however, confers important legal rights and benefits IOW, LLC v. Breus, 425 F. Supp. 3d 1175.

As you navigate the intricate dance of trademark registration, remember the SOU is not just a formality but a foundational element of your brand's identity and longevity in the market. In the competitive arena where your brand must shine the brightest, the Statement of Use is your beacon, guiding you to a future where your trademark is not just seen but recognized, respected, and revered.

We can help you with your trademark Statement of Use today.

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