Why is a Statement of Use (SOU) required for my trademark?

Why is a Statement of Use (SOU) required for my trademark?

  • 10 June, 2024
  • Nyall Engfield

A Statement of Use (SOU) is a critical document in the process of trademark registration, especially for those applications filed under the "intent-to-use" (ITU) basis in the United States. The Statement of Use serves as a bridge between the intent to use a trademark in commerce and the actual use, which is a requirement for the registration of a trademark. This requirement is rooted in the principle that trademark rights in the U.S. are based on use of the mark in commerce, rather than merely on the registration of the mark. Understanding the SOU, its purpose, requirements, and implications, is essential for anyone navigating the complex waters of trademark law.

The Role and Purpose of the Statement of Use

The primary role of the SOU is to demonstrate to the United States Patent and Trademark Office (USPTO) that the mark is being used in commerce on or in connection with the goods and services listed in the trademark application. This demonstration of use is a statutory requirement for the registration of a trademark on the Principal Register under the Lanham Act, the federal statute that governs trademark law in the U.S.

Filing an SOU is the final step in converting an ITU application into a registration, providing tangible proof that the mark is not merely a concept but a living, breathing part of the marketplace. The Statement of Use requires the applicant to submit specimens (example of commercial use) showing the mark as used in commerce and to declare the date of first use of the mark both anywhere and in commerce.

Preparing the Statement of Use

Preparing an SOU involves gathering and submitting a specimen or example of how the mark is used in commerce. For goods, this might be a photo of the product with the mark on the packaging. For services, it could be advertising material or a screenshot of a website offering the services under the mark. The specimen must clearly show the mark in use in a manner that would be recognized by potential consumers as identifying the source of the goods or services.

In addition to the specimen, the applicant must declare the date of first use of the mark anywhere and the date of first use in commerce. These dates are critical as they establish the mark's priority over other marks and are a testament to the mark's actual use in the economic marketplace.

Timing and Deadlines

The timing for filing an SOU is strictly regulated. After the USPTO issues a Notice of Allowance (NOA) for an ITU application, the applicant has six months to file the SOU. If more time is needed, the applicant may request up to five six-month extensions, providing a valid reason for the delay in each request.

It's crucial to adhere to these deadlines as failure to file the SOU or an extension request within the allotted time results in the abandonment of the trademark application. Such an outcome not only wastes the effort and resources invested in the application process but also potentially leaves the mark open for use and registration by others.

Legal Implications and Challenges

The legal implications of the Statement of Use are significant. A properly filed SOU can lead to the successful registration of a trademark, granting the owner exclusive rights to use the mark on or in connection with the listed goods and services in commerce. These rights are enforceable in federal court and provide a basis for combating infringement and counterfeit goods.

However, challenges can arise. The USPTO may reject an SOU for various reasons, such as the specimen not adequately showing the mark in use or the goods and services not aligning with those listed in the application. Such rejections can delay the registration process and require additional legal work to overcome.

Strategic Considerations

Filing a Statement of Use is not merely a procedural step; it's a strategic decision that requires careful planning. Applicants must ensure that their use of the mark in commerce aligns with their long-term branding and marketing strategies, as the SOU locks in the specifics of how the mark is used.

Moreover, understanding the nuances of the SOU process and the importance of accuracy and timeliness can prevent costly errors. Many applicants choose to work with trademark attorneys to navigate the complexities of trademark law, from the application process through the filing of the Statement of Use and beyond.

The Statement of Use is a pivotal component of the U.S. trademark registration process, embodying the principle that rights in a trademark are earned through actual use. By requiring applicants to demonstrate use of their mark in commerce, the USPTO ensures that only those marks that are truly in use, and thus serving the essential function of a trademark, are afforded the protections of federal registration.

Navigating the SOU process successfully requires an understanding of its legal and procedural requirements, the strategic foresight to align the use of the mark with broader business objectives, and often, the expertise of a legal professional to mitigate the risks of rejection or abandonment. Ultimately, the Statement of Use represents the culmination of the trademark application process, marking the transition from an intent to use a mark to its actual use in commerce, and securing the mark's place in the marketplace.

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