So, you’ve filed your trademark application based on intent to use, and now the USPTO is requesting evidence of use (notice of allowance) before registration. This request comes near the end of the trademark application process for intent to use applications. Use in commerce is a requirement for obtaining a trademark registration in the United States. It means that you are actually using your mark in the ordinary course of trade, such as selling or offering your goods or services under your mark.
But what if you are not ready to prove use in commerce by the time the United States Patent and Trademark Office (USPTO) issues a notice of allowance for your mark? What options do you have? In this blog post, we will explain when it’s time to prove use in commerce, what options you have, and what qualifies as proof of use in commerce.
When It’s Time to Prove Use in Commerce
After you file a trademark application based on intent to use, the USPTO will examine your application and publish it for opposition. Assuming that no one opposes your mark or that if they do, it is resolved in your favor, the USPTO will then issue a notice of allowance for your mark. This means that your mark has been approved for registration, but you still need to prove use in commerce before you can get a registration certificate.
You have six months from the date of the notice of allowance to either:
File a statement of use with proof of use in commerce; or
File an extension of time to file a statement of use.
If you fail to do either of these within six months, your application will be abandoned and you will lose your right to register your mark.
What Options You Have
If you are ready to prove use in commerce within six months of the notice of allowance, you can file a statement of use with the USPTO. A statement of use is a declaration that you are using your mark in commerce and that the information in your application is still accurate. You also need to submit proof of use in commerce, which we will discuss later.
The fee for filing a statement of use is $100 per class of goods or services. You can file a statement of use online using the Trademark Electronic Application System (TEAS).
If you are not ready to prove use in commerce within six months of the notice of allowance, you can file an extension of time to file a statement of use with the USPTO. An extension of time is a request for more time to file a statement of use. You can file up to five extensions, each granting an additional six months to prove use in commerce. However, you cannot extend the time beyond 36 months from the date of the notice of allowance.
The government fee to file an extension of time is $125 per class of goods or services. As with all trademark application filings, you can file an extension of time online using TEAS.
For the first extension request, you do not need to provide any reason or evidence for why you need more time. You just need to state that you have a continued bona fide intention to use your mark in commerce.
For the second through fifth extension requests, you need to provide a reason and evidence for why you need more time. You also need to state that you have made efforts to use your mark in commerce or that there are circumstances beyond your control that prevent you from using your mark in commerce.
Some examples of acceptable reasons and evidence are:
Product or service development or testing;
Market research or consumer testing;
Manufacturing activities or delays;
Regulatory approval or compliance;
Securing distributors or sales outlets;
Educational or promotional activities;
Legal issues or disputes;
Natural disasters or other emergencies.
Some examples of unacceptable reasons and evidence are:
Lack of funds or resources;
Business reorganization or restructuring;
Change of management or ownership;
Change of mark or logo design;
Change of goods or services;
Lack of demand or interest;
Personal reasons or preferences.
If you decide that you do not want to register your mark anymore, you can abandon your application by filing an express abandonment with the USPTO. An express abandonment is a written request to withdraw your application and give up your right to register your mark. You do not need to pay any fee for filing an express abandonment.
You can file an express abandonment online using TEAS. However, once you file an express abandonment, you cannot revive or reinstate your application. You will have to start over with a new application and pay new fees if you want to register your mark again.
What Qualifies as Proof of Use in Commerce
Whether you file a statement of use within six months or after an extension of time, you need to submit proof of use in commerce with the USPTO. Proof of use in commerce is evidence that shows how you are using your mark in the ordinary course of trade, such as selling or offering your goods or services under your mark.
The proof of use in commerce must include:
A specimen of use that shows how your mark appears on or with your goods or services;
A date of first use in commerce that indicates when you first used your mark in commerce; and
A verified statement that you are using your mark in commerce and that the information in your application is still accurate.
A specimen of use is a sample of how you display your mark to the public. It can be a label, tag, package, wrapper, container, or display associated with your goods; or a sign, brochure, website, advertisement, invoice, or catalog associated with your services.
The specimen of use must show the mark as you actually use it in commerce, not as you intend to use it or as you registered it. It must also show the mark as it appears on or with the goods or services that you listed in your application, not on other goods or services.
A date of first use in commerce is the date when you first used your mark in commerce in connection with your goods or services—meaning your goods or services are actively available to others. It can be the same as or later than the date of first use anywhere that you provided in your application. It cannot be earlier than the date of first use anywhere or the filing date of your application.
A verified statement is a declaration that you sign under penalty of perjury. It confirms that you are using your mark in commerce and that the information in your application is still accurate. You can sign the verified statement electronically using TEAS.
Proving use in commerce is a crucial step for obtaining a trademark registration based on intent to use. However, you may not be ready to prove use in commerce by the time the USPTO issues a notice of allowance for your mark. In that case, you have options to either file an extension of time, file a statement of use, or abandon your application. You should weigh the pros and cons of each option and decide what is best for your situation.
To help you with the trademark registration process, you may want to consult a trademark attorney who can advise you on your rights and obligations and represent you before the USPTO. A trademark attorney can also help you with other aspects of trademark law, such as conducting clearance searches, drafting licensing agreements, enforcing your mark against infringers, or resolving disputes with other parties.
Trademarks are valuable assets that can benefit your business in many ways. By proving use in commerce, you can secure your trademark rights and protect your brand identity.
If you want to learn more about trademarks or other aspects of intellectual property law, contact us today.