1109    Statement of Use Under §1(d) of the Trademark Act  

As noted in TMEP §1103, an intent-to-use applicant must file an allegation of use in order to obtain a registration.  This section discusses statements of use only.  See TMEP §§1104–1104.11 regarding amendments to allege use.

Under 15 U.S.C. §1051(d), a statement of use must be filed within six months of the issuance date of the notice of allowance, or within a previously granted extension of time to file a statement of use.

1109.01   Minimum Filing Requirements for a Statement of Use

The statement of use must meet the following minimum filing requirements before it may be referred to an examining attorney for examination on the merits:

  • (1) the prescribed fee for at least one class;
  • (2) one specimen of the mark as used in commerce; and
  • (3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant that the mark is in use in commerce.

37 C.F.R. §2.88(e).

A statement of use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. §2.88(e)(3) for a verified statement that the mark is in use in commerce.  In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992); see In re Conservation Tech. Inc., 25 USPQ2d 1079, 1080 (Comm’r Pats. 1992).  The examining attorney will require an allegation that the "mark is in use in commerce" during examination.  See TMEP §1109.09.

See TMEP §1109.02 regarding review of the statement of use for compliance with minimum filing requirements, and TMEP §1109.06 regarding the requirements for a complete statement of use.

1109.02   Review for Compliance with Minimum Filing Requirements

Statements of use are reviewed by the ITU/Divisional Unit to determine whether they are timely and in compliance with the minimum requirements listed in 37 C.F.R. §2.88(e).  If the statement of use is untimely, either because it is premature or late, the ITU staff will notify the applicant in writing that the statement of use cannot be considered because it is untimely, and refund the filing fee.

If the statement of use is timely, but does not comply with one or more of the minimum filing requirements of 37 C.F.R. §2.88(e), the ITU staff will notify the applicant in writing of the defect and advise the applicant that the USPTO will not examine the statement of use on the merits unless the applicant corrects the defect before expiration of the deadline for filing a statement of use.  

If the statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title.  See TMEP §1109.10 for further information.

If the applicant does not correct the deficiency before the expiration of the statutory deadline, the application will be abandoned.  In such a case, the USPTO will not refund the filing fee.

The applicant may not withdraw the statement of use and return the application to the previous status of awaiting filing of the statement of use, even if the statement of use fails to meet the minimum filing requirements.  37 C.F.R. §2.88(g); TMEP §1109.17.  However, in limited circumstances, an applicant may file an "insurance" extension request with or after the filing of a statement of use, if there is time remaining in the existing six-month period in which the statement of use was filed, in order to gain more time to comply with the statutory requirements for filing the statement of use.  37 C.F.R. §2.89(e)(1).  See TMEP §§1108.03 and 1109.16(c) for further information.

1109.02(a)   Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements

If the ITU staff determines that a statement of use does not meet the minimum filing requirements of 37 C.F.R. §2.88(e), and there is no time remaining in the statutory filing period, the applicant’s recourse is as follows:

  • Petition to Revive Under 37 C.F.R. §2.66.  If the applicant unintentionally failed to comply with the minimum filing requirements, the applicant may file a petition to revive under 37 C.F.R. §2.66 within two months of the issuance date of the notice of abandonment.  See TMEP §§1714–1714.01(g) regarding petitions to revive.
  • Request for Reinstatement.  If the applicant has proof that shows on its face that the statement of use met the minimum requirements when filed, the applicant may request reinstatement, within two months of the issuance date of the notice of abandonment.  For example, if the statement of use is rejected due to the omission of a specimen or fee, and the applicant has proof that shows on its face that the missing element was included, the applicant may request reinstatement.  No fee is required.  The request should be directed to the ITU/Divisional Unit.  See TMEP §1712.01 regarding the types of evidence that support reinstatement.
  • Petition Under 37 C.F.R. §2.146.  If the applicant contends that the statement of use met the minimum requirements of 37 C.F.R. §2.88(e) when filed but was improperly denied by the ITU staff, and the applicant does not have proof that shows on its face that the statement of use was complete when filed (see TMEP §1712.01), the applicant may file a petition under 37 C.F.R. §2.146(a)(3), asking the Director to review the action of the ITU staff.  The petition must be filed within two months of the issuance date of the notice of abandonment, and must include the petition fee required by 37 C.F.R. §2.6, proof in the form of an affidavit or declaration under 37 C.F.R. §2.20, and any available evidence showing that the statement of use was complete when filed.  TMEP §§2.146(c), (d). See TMEP §1705.03 regarding proof of facts on petition.

No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance.  See 15 U.S.C. §1051(d)(2).

1109.03   Use on All Goods/Services Required Before Filing

The applicant may not file a statement of use until the applicant has made use of the mark in commerce on or in connection with all goods/services specified in the notice of allowance, unless the applicant files a request to divide.  37 C.F.R. §2.88(c).  See TMEP §§1110–1110.11(a) regarding requests to divide.

If the applicant files a statement of use for some of the goods/services identified in the notice of allowance, and a request for an extension of time to file a statement of use for other goods/services that are identified in the notice of allowance, but does not file a request to divide, the ITU/Divisional Unit will issue an Office action granting the applicant additional time to either:  (1) file a request to divide, or (2) delete the goods/services that are not in use from the application.  If the applicant met the minimum requirements for filing the statement of use and extension request before expiration of the deadline for filing the statement of use, the applicant may file the request to divide after expiration of the statutory deadline for filing the statement of use.  If the applicant does not file an acceptable request to divide within the time specified in the Office action, the goods/services that are not covered by the statement of use will be deleted from the application.

See TMEP §1109.13 regarding examination of a statement of use that omits, but does not expressly delete, some of the goods/services identified in the notice of allowance.

1109.04   Time for Filing Statement of Use

The statement of use must be filed within six months after the issuance date of the notice of allowance or within a previously granted extension of time for filing a statement of use.  See TMEP §§1108–1108.05 regarding extension requests.

If the applicant does not timely file a statement of use within this time period, the application is abandoned.  15 U.S.C. §1051(d)(4); 37 C.F.R. §2.88(h).  If the failure to timely file a statement of use is unintentional, the applicant may file a petition to revive under 37 C.F.R. §2.66.  See TMEP §§1714–1714.01(g).

A statement of use filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or federal holiday within the District of Columbia.  37 C.F.R. §2.195(a)(2).    

A statement of use filed on paper is considered timely if it is received in the Office by the due date or mailed or transmitted by the due date with a certificate of mailing or facsimile transmission in accordance with 37 C.F.R. §2.197.  See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

Any statement of use filed after the examining attorney approves the mark for publication but before the issuance of the notice of allowance is untimely and will not be considered.  The USPTO will refund the filing fee.  37 C.F.R. §§2.76(a), 2.88(a); seeTMEP §§1104.03(b), (c).

1109.05   Form of Statement of Use  

To expedite processing, it is recommended that the statement of use be filed through TEAS, available at http://www.uspto.gov.  When a statement of use is filed electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

Alternatively, the applicant may call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed paper form.  The completed form may be mailed, faxed, or hand-delivered to the USPTO.  If the form is faxed, it must be accompanied by an authorization to charge the filing fee to a credit card or deposit account.  The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf.  If a statement of use is filed though TEAS, payment must be made by credit card, deposit account, or EFT.  Paper forms may be delivered by hand or courier to the Trademark Assistance Center ("TAC"), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia.  TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.

If the applicant does not file electronically or use the USPTO’s pre-printed paper form, the statement of use should be captioned as an "Allegation of Use."  37 C.F.R. §2.88(d).  However, this format is not mandatory.  The USPTO will accept and enter a document that meets the minimum filing requirements set forth in 37 C.F.R. §2.88(e), regardless of whether it is properly titled.

1109.06   Requirements for a Complete Statement of Use

A complete statement of use must include the following elements:

  • (1) a verified statement that the applicant is believed to be the owner of the mark and that the mark is in use in commerce on or in connection with the goods or services, specifying the dates of the applicant’s first use of the mark and first use of the mark in commerce, and setting forth or incorporating by reference those goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce;
  • (2) one specimen per class of the mark as used in commerce; and
  • (3) the fee per class required by 37 C.F.R. §2.6.

37 C.F.R. §2.88(b).

1109.07   Examination of the Statement of Use — In General

If the statement of use is timely and complies with the minimum filing requirements of 37 C.F.R. §2.88(e), the ITU staff will refer it to the examining attorney for examination on the merits.  If available, the same examining attorney who initially examined the application will examine the statement of use.  Examination of the statement of use is sometimes referred to as "second examination."

The examining attorney will review the statement of use to confirm that it meets the requirements of the Act and the rules.  See TMEP §1109.06 for the requirements for a complete statement of use.

The examining attorney will examine the specimen to confirm that it shows appropriate use as a mark on or in connection with the goods/services identified in the statement of use (see TMEP §§1202–1202.17(e)(vi) regarding use of subject matter as a trademark, and TMEP§§1301.02–1301.02(f) regarding use of matter as a service mark), and will also determine whether the mark shown on the drawing is a substantially exact representation of the mark as used on the specimen (see TMEP §§807.12(a)–807.12(a)(iii), and 1109.12).

If the applicant has complied with the statutory requirements for a statement of use before the expiration of the deadline for filing the statement of use, the applicant may amend or correct the statement of use during examination.  See TMEP §§1109.16(a)–(d) regarding compliance with statutory requirements before the expiration of the time for filing the statement of use.

If the examining attorney finds the statement of use acceptable, the USPTO will notify the applicant that the statement of use is approved.  See TMEP §1109.18 regarding approval of the statement of use.  The USPTO will then issue the registration and publish notice of the registration in the Official Gazette.  The application is not again subject to opposition.  

See TMEP §1109.15 regarding statements of use filed on paper for multiple-class applications and TMEP§§1109.16–1109.16(d) regarding the issuance of Office actions and correction of defects in a statement of use.

1109.08   Examination of the Statement of Use – New Requirements and Refusals

Generally, in examining the statement of use, the USPTO will issue only requirements or refusals concerning matters related to the statement of use.  The examining attorney should not make a requirement or refusal concerning matters that could or should have been raised during initial examination, unless the failure to do so in initial examination constitutes a clear error, i.e., would result in issuance of a registration in violation of the Act or applicable rules.  See TMEP §706.01 regarding "clear error."

If the examining attorney determines that he or she must make a refusal or requirement that could or should have been made during initial examination of the application, the examining attorney must consult the managing attorney or senior attorney before taking the action.  This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.

The examining attorney must act on all new issues arising in the examination of the statement of use.  For example:

  • The examining attorney must issue a refusal if the specimen fails to show use of the designation as a mark.  See TMEP §§1202–1202.17(e)(vi) and 1301.02–1301.02(f) regarding use as a mark.
  • The examining attorney must issue an appropriate refusal or requirement if there is evidence that the mark has become descriptive or generic as applied to the goods/services during the time that has elapsed since initial examination.

Generally, the USPTO will not conduct any search for conflicting marks or issue any refusals under §2(d) of the Act in the examination of the statement of use.  However, if the examining attorney determines that a second search is necessary, the examining attorney will conduct a second search and take any action that is appropriate.

1109.09   Use in Commerce

The filing of a verified statement that "the mark is in use in commerce" is a minimum requirement that must be satisfied before the expiration of the statutory period for filing the statement of use.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(3).  If the examining attorney determines, before taking an action in connection with the statement of use, that the verified statement of use in commerce has been omitted, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.

An application that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, is considered to be substantially in compliance with the minimum filing requirements under 37 C.F.R. §2.88(e)(3).  In re Carnicon Dev. Co., 34 USPQ2d 1541 (Comm’r Pats. 1992); see also In re Conservation Tech. Inc., 25 USPQ2d 1079 (Comm’r Pats. 1992).  Thus, if the applicant files a statement containing a verified date of first use in commerce on or before the expiration of the period for filing the statement of use, the applicant has met the minimum filing requirements.  The examining attorney must require a verified statement that the "mark is in use in commerce" before approving the statement of use.  This statement may be filed after expiration of the deadline for filing the statement of use, within the period for response to the examining attorney’s Office action.

An applicant is not required to specify the method of use or the type of commerce in which a mark is used.  TMEP §§901.03, 905.

1109.09(a)   Dates of Use

The statement of use must include the dates of the applicant’s first use of the mark and first use of the mark in commerce on or in connection with the goods/services specified in the notice of allowance.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1)(ii).  Where the applicant claims a §1(a) filing basis for some of the goods/services and a §1(b) filing basis for other goods/services, the statement of use must include dates of use for the §1(b) goods/services that are covered by the notice of allowance.  37 C.F.R. §2.88(b)(1)(ii).  See TMEP §903.08 regarding applications in which more than one date is specified for a particular class.

Setting forth the dates of use is not a minimum filing requirement that must be met before the application will be referred to the examining attorney.  If the dates of use are omitted from the statement of use, but the statement that "the mark is in use in commerce" is included, the dates may be supplied after the expiration of the statutory period for filing the statement of use.  The applicant may also amend or correct the dates of use after the expiration of the deadline for filing the statement of use, if the applicant meets the requirements of 37 C.F.R. §2.71(c)(2).  Any amendment to the dates of use must be verified.  37 C.F.R. §2.71(c).

The date of first use in commerce may not be earlier than the date of first use anywhere.  TMEP §903.03.

The applicant must state dates of use for each class.  37 C.F.R. §2.86(b). The dates of first use for each class must apply to at least one item in the class but do not have to apply to more than one item.  However, the applicant must have used the mark in commerce on all items listed in the notice of allowance before filing the statement of use, unless the applicant files a request to divide.  37 C.F.R. §2.86(b), 2.88(c); TMEP §1109.03.  See TMEP §1110.07 regarding the division of an application in which a statement of use is due.

While the dates of use may be supplied after expiration of the statutory filing period, the applicant must make valid use of the mark in commerce on or in connection with all the goods/services in the application before the expiration of the statutory filing period.  See 37 C.F.R. §2.71(c)(2).  If the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use, the examining attorney must refuse registration because the applicant failed to make use within the time permitted, and also inform the applicant that the application is deemed abandoned.  When refusing registration on this ground, the examining attorney must issue a regular Office action with a six-month response clause.  See TMEP §1109.16(b).

1109.09(b)   Specimens

The examining attorney must examine the specimens to confirm that they show use of the subject matter as a mark on or in connection with the goods/services identified in the statement of use.  See TMEP §§1202–1202.17(e)(vi) regarding use of subject matter as a trademark, and TMEP§§1301.02–1301.02(f) regarding use of matter as a service mark.  The examining attorney must also determine whether the mark as used on the specimens is a substantially exact representation of the mark on the drawing. See TMEP §§807.12(a)–807.12(a)(iii), 1109.12.  The examining attorney must issue requirements and refusals, as appropriate, based on the examination of the specimens, subject to the same standards that govern the examination of specimens in a §1(a) application.  TMEP §§904–904.07(b).

The submission of at least one specimen with a statement of use is a minimum filing requirement.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(2); In re Campbell, 33 USPQ2d 1055 (Comm’r Pats. 1993).  If the examining attorney determines, before taking an action regarding the statement of use, that no specimen was submitted with the statement of use, the examining attorney should refer the application to the ITU/Divisional Unit for appropriate action.

In a multiple-class application, the applicant must submit one specimen for each class of goods/services in the statement of use before the statement of use may be approved.  37 C.F.R. §§2.86(b), 2.88(b)(2).  However, only one specimen for one class is needed to comply with the minimum filing requirements.  If at least one specimen is filed within the time permitted for filing the statement of use, the applicant may submit specimen(s) for the other class(es) after the expiration of the statutory filing period, if the applicant verifies that the additional specimen(s) was in use in commerce before the expiration of the deadline for filing the statement of use.  37 C.F.R. §2.59(b).

If the applicant files at least one specimen with the statement of use, but the specimen is unacceptable, the applicant may provide a substitute specimen after the expiration of the time permitted for filing the statement of use, provided that the applicant verifies that the substitute specimen was in use in commerce before the expiration of the deadline for filing the statement of use.  37 C.F.R. §2.59(b).  If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline, the examining attorney must refuse registration because the applicant failed to make use of the mark within the time permitted, and inform the applicant that the application is deemed abandoned.  The examining attorney must issue a regular Office action with a six-month response clause.  TMEP §1109.16(b).  See TMEP §1108.03 regarding the filing of an "insurance" request for an extension of time to file a statement of use in order to gain additional time to make proper use of the mark.

If the dates of first use change as a result of the submission of a new specimen, the applicant must amend the dates of use in the statement of use.  The amendment must be supported by an affidavit or declaration.  37 C.F.R. §2.71(c); TMEP §1109.09(a).

If the statement of use is filed electronically using TEAS, the applicant must submit a digitized image of the specimen in .jpg or .pdf format.  37 C.F.R. §2.56(d)(4).  See TMEP §904.02(a) for additional information about electronically filed specimens.

1109.10   Ownership

Review by the ITU/Divisional Unit

Section 1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1), requires that "the applicant shall file ... a verified statement that the mark is in use in commerce ..." within six months of the notice of allowance, or within a previously granted extension of time to file a statement of use.  The party filing the statement of use must be the owner of the mark at the time of filing.  This is a statutory requirement that must be satisfied before the expiration of the deadline for filing the statement of use.  In re Colombo, Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).

If the party who files a statement of use was the owner of the mark at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use.  However, if the party who files a statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the application is abandoned.

The question of whether the statement of use was filed by the owner is determined by the ITU/Divisional Unit.  If a statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title.  If the party who filed the statement of use was the owner at the time of filing, evidence to establish ownership may be provided after expiration of the deadline for filing the statement of use.  See 37 C.F.R. §§3.71(d), 3.73(b).  To establish ownership, the new owner must either:  (1) record an assignment or other document of title with the Assignment Recordation Branch, and include a statement in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title occurred prior to filing the statement of use.  37 C.F.R. §3.73(b)(1); TMEP §502.01.

If the applicant does not establish that the party who filed the statement of use was the owner of the application at the time of filing, the ITU/Divisional Unit will abandon the application.  The true owner may then file a petition to revive under 37 C.F.R. §2.66, accompanied by either a substitute statement of use or request for extension of time to file a statement of use, provided that granting the petition would not extend the period for filing the statement of use beyond thirty-six months after the issuance date of the notice of allowance.  See TMEP §1714.01(b) regarding the requirements for petitions to revive.

If a statement of use is filed by the owner of the mark, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment.  See TMEP §1201.02(c) for examples of correctable and non-correctable errors.

Review by Examining Attorney

If an examining attorney determines, before taking an action in connection with the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney should return the statement of use to the ITU/Divisional Unit for appropriate action.

If the examining attorney determines, after taking an action regarding the statement of use, that the statement of use was filed by someone other than the owner of record, the examining attorney must require the applicant to submit evidence to establish chain of title, as discussed above.  If the party who filed the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the examining attorney must refuse registration because no acceptable statement of use was filed within the time permitted, and inform the applicant that the application is deemed abandoned.  When refusing registration on this ground, the examining attorney must issue a regular Office action with a six-month response clause.  See TMEP §1109.16(b).

1109.11   Verification and Execution

The requirement that a statement of use include a signed verification or declaration is a minimum filing requirement.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(e)(3); In re Kinsman, 33 USPQ2d 1057 (Comm’r Pats. 1993).

If, before taking an action in connection with the statement of use, the examining attorney determines that the statement of use does not include a signed verification or declaration, the examining attorney should return the application to the ITU/Divisional Unit for appropriate action.

1109.11(a)   Authority of Signatory

A statement of use must include a statement that is signed and verified by a person properly authorized to sign on behalf of the applicant under 37 C.F.R. §2.193(e)(1).  37 C.F.R. §2.88(b)(1).  Anyone who can verify the initial application may verify the statement of use.  Generally, if the statement of use is filed by the owner of the mark, the USPTO will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.  See TMEP §611.03(a).

1109.11(b)   Verification of Essential Elements

The examining attorney must review the verified statement of use to confirm that it conforms to the requirements of the Act and the rules.  The verified statement must include an allegation that the applicant believes it is the owner of the mark, and a verification of the dates of use and identification of the goods/services.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1).  See TMEP §1109.10 regarding ownership, TMEP §1109.09(a) regarding dates of use, and TMEP §1109.13 regarding the identification of goods/services.

The averment of ownership is an essential element of the verification.  37 C.F.R. §2.88(b)(1)(i). If it is omitted, the examining attorney must require the applicant to submit a verified statement that the applicant is the owner of the mark.  This statement may be submitted after expiration of the time for filing the statement of use.

1109.11(c)   Date of Execution

If the statement of use was executed before the stated dates of use, the examining attorney must require that the statement be re-executed.  See TMEP §903.06(a) regarding apparent discrepancies between dates of use and execution dates, and TMEP §§903.04 and 1109.09(a) regarding amendment of the dates of use.

If the statement of use is filed more than one year after the date of execution, the examining attorney will require a substitute verification or declaration under 37 C.F.R. §2.20 stating that the mark is still in use in commerce.  See 37 C.F.R. §2.88(k); TMEP §804.03.

1109.11(d)   Signature of Electronically Transmitted Statement of Use

See TMEP §611.01(c) regarding signature of documents filed through TEAS.

1109.12   Drawing

Under 37 C.F.R. §2.51(b), the drawing in an intent-to-use application must be a substantially exact representation of the mark as intended to be used and as actually used upon filing the allegation of use.  An applicant may not amend the mark in a drawing if the amendment is a material alteration of the mark on the drawing originally submitted with the application.  37 C.F.R. §2.72(b)(2); TMEP §§807.13(a), 807.14–807.14(f).  Also, the mark in the drawing must agree with the mark as used on the specimen(s).  TMEP §§807.12(a)–807.12(a)(iii).  The same standards that apply to §1(a) applications for determining whether a specimen supports use of the mark and whether an amendment to the mark may be permitted also apply in the examination of the statement of use.  

Therefore, if the mark in the drawing filed with the application is not a substantially exact representation of the mark as used on the specimen, the examining attorney must require:  (1) either submission of a new specimen or an amendment of the mark in the drawing, if the amendment of the mark would not be a material alteration of the mark on the original drawing; or (2) submission of a new specimen, if the amendment of the mark would be a material alteration of the mark on the original drawing.  37 C.F.R. §2.72(b)(2).

1109.13   Identification of Goods/Services in Statement of Use

The statement of use must either list or incorporate by reference the goods/services specified in the notice of allowance on or in connection with which the mark is in use in commerce.  15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88(b)(1)(ii).  The goods/services specified in the statement of use must conform to the goods/services identified in the notice of allowance.  37 C.F.R. §2.88(i)(1).  To incorporate the goods/services by reference, the applicant may state that the mark is in use on "those goods/services identified in the notice of allowance" or "those goods/services identified in the notice of allowance except ... [followed by an identification of the goods/services to be deleted]."  If the applicant omits any goods/services that were listed in the notice of allowance, the ITU/Divisional Unit will delete these goods/services from the application.  The applicant may not thereafter reinsert the deleted goods/services.  37 C.F.R. §2.88(i)(2).  In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing a statement of use for the omitted goods/services.

If the applicant fails to identify or incorporate by reference any goods or services, or if the applicant lists all the goods/services in the section of a pre-printed paper form designated for the identification of goods that are not in use, the Office will permit applicant to correct the mistake.  The ITU staff will issue a letter noting that no goods or services were specified or incorporated by reference in the statement of use, and granting the applicant thirty days in which to submit a verified statement clarifying the goods/services.

1109.14   Classification

If the mark published in the wrong class of the goods/services, the examining attorney must ensure that the classification is corrected.  This may be done in an examiner’s amendment without prior approval by the applicant (see TMEP §707.02).  Republication is not required.

If class(es) are added to the application after the filing of the statement of use, the examining attorney must require payment of the fee(s) for filing the statement of use for the added class(es), in addition to the fee(s) required by 37 C.F.R. §2.6(a)(1) for adding a class(es) to the application.  TMEP §1403.02(c).

1109.15   Filing Fees  

Payment of the filing fee for at least a single class is a minimum filing requirement.  See 37 C.F.R. §§2.88(b)(3), (e)(i); In re L.R. Sport Inc., 25 USPQ2d 1533 (Comm’r Pats. 1992).

In a multiple-class application, if the applicant files a statement of use electronically, TEAS will require payment of the fees for all classes. However, if the applicant files a statement of use for a multiple-class application on paper and includes the fee for only one class of goods/services, the ITU staff will issue an Office action granting the applicant 30 days in which to submit the missing fees to cover all classes or specify the class(es) to be abandoned.  The additional fees may be paid after the time for filing the statement of use has expired, within the period for response to the Office action.  If the applicant does not submit the fees or specify the classes to be abandoned within the set time period, the USPTO will apply the fees paid to the lowest-numbered class(es) in ascending order, and will delete the goods/services in the higher-numbered class(es) from the application.  37 C.F.R. §2.88(b)(3).

If an applicant files a statement of use and a request to divide the application at the same time, and the fees submitted are sufficient for one but not both, the fees will be applied first to the statement of use, and the applicant will be notified of the deficiency.  See TMEP §§1110.02 and 1110.07 for further information about filing fees for requests to divide.

If the applicant files an "insurance" extension request in conjunction with a statement of use (see TMEP §1108.03), and the applicant submits fees sufficient for one but not both, the USPTO will apply the fees as follows:  (1) if there is enough money to cover the extension request, the USPTO will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the USPTO will apply the fees to the statement of use.

See TMEP §1109.15(a) regarding returned checks, EFT and credit card payments that are refused by financial institutions, and fees charged to deposit accounts with insufficient funds.

1109.15(a)   Processing Deficient Fees

If the filing fee for at least a single class is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the fee for at least one class of goods/services must be repaid before the expiration of the statutory filing period, or the application will be abandoned.

If a check is returned unpaid or an EFT or credit card payment is refused, and the statement of use was accompanied by an authorization to charge deficient fee(s) to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, the USPTO will charge the filing fee for the statement of use and the fee for processing the returned check or refused payment (37 C.F.R. §2.6(b)(12)) to the deposit account.

If the examining attorney determines, before taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, the examining attorney should e-mail the ITU/Divisional Unit and request that the SOU Processing Complete status be withdrawn and that the ITU staff notify the applicant in writing of the defect.  See TMEP §1109.15.

If the examining attorney determines, after taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, and there is time remaining in the statutory period for filing the statement of use, the examining attorney will issue an Office action refusing registration on the ground that the filing fee for the statement of use was not paid and will require the applicant to submit the filing fee on or before the statutory deadline.  If the fee was not paid because a check was returned unpaid, or an EFT or credit card was refused, the examining attorney will also require submission of the processing fee required by 37 C.F.R. §2.6(b)(12).  The processing fee may be paid after expiration of the statutory deadline for filing the statement of use.

If the fee for at least a single class has not been paid, and there is no time remaining in the statutory period for filing the statement of use, the examining attorney will issue an Office action refusing registration and stating that the application is abandoned because a proper statement of use was not filed within the time required by statute.  37 C.F.R. §§2.88(e)(1), (h).  In such a case, the examining attorney must issue a regular Office action, with a six-month response clause.  If the applicant does not establish within the six-month response period that the fee for at least a single class of goods/services was paid prior to the expiration of the statutory filing period, the application will be abandoned.

If the fee for at least a single class is paid before expiration of the statutory deadline, but the fee(s) for additional class(es) are deficient, the examining attorney will issue an Office action requiring the applicant to submit the missing fees to cover all class(es) or specify the class(es) to be abandoned.  The additional fees may be paid after the time for filing the statement of use has expired, within the six-month period for response to the examining attorney’s Office action.  If the applicant does not submit the fees or specify the classes to be abandoned within the set time period, the USPTO will apply the fees paid to the lowest-numbered class(es) in ascending order, and will delete the goods/services in the higher-numbered class(es) from the application.  37 C.F.R. §2.88(b)(3).

If the statement of use has been approved and the mark is registered when the Office learns that the fee for the statement of use was deficient, the USPTO will cancel the registration as inadvertently issued, because the statutory requirements for registration have not been met.  If the fee for at least a single class of goods/services was not paid before the expiration of the statutory filing period, the application will be abandoned.  If the fee for at least a single class of goods/services was timely paid, but the fees for additional class(es) have not been paid, the USPTO will restore the application to pendency and refer it to the examining attorney for appropriate action.

See TMEP §405.06 regarding payments that are refused.

1109.16   Correcting Defects in Statement of Use

The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b)) before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).  Other defects may be cured after the expiration of the statutory filing period, within the period for response to the Office action notifying the applicant of the defect.  See TMEP §1109.16(a) regarding defects that must be cured before the expiration of the statutory filing period.

1109.16(a)   Statutory Requirements that Must Be Met Within Statutory Filing Period  

The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b)) before expiration of the period for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).  Thus, the following deficiencies must be cured before expiration of the statutory filing period:

  • (1) Specimens and Dates of Use in Commerce.  The applicant must make valid use of the mark in commerce and must provide one specimen that was in use before the expiration of the time permitted for filing the statement of use.  37 C.F.R. §2.59(b)(2).  If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline for filing the statement of use, the examining attorney must refuse registration because the applicant failed to make use within the time permitted.  See TMEP §1109.09(b).  

    The examining attorney must refuse registration on the same grounds if the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use.  37 C.F.R. §2.71(c)(2); TMEP §1109.09(a).

  • (2) Filing by Owner.  The party filing the statement of use must be the owner of the mark at the time of filing.  If the party who filed the statement of use was not the owner at the time of filing the statement of use, the applicant may not provide a substitute statement of use (or the equivalent) in the name of the true owner after the expiration of the deadline for filing the statement of use.  In re Colombo, Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).  Therefore, if the party filing the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the application will be abandoned for failure to file a statement of use.  See TMEP §1109.10 for further information.
  • (3) Verification.  The statement of use must be verified by the applicant or a person properly authorized to sign on behalf of the applicant under 37 C.F.R. §2.193(e)(1).  If the statement of use is unsigned or signed by the wrong party, a substitute verification must be filed before the expiration of the statutory period for filing the statement of use.  37 C.F.R. §2.88(e)(3).  Generally, however, the USPTO does not question the authority of the person who verifies a statement of use.  See TMEP §1109.11(a).
  • (4) Filing Fee for At Least a Single Class.  Payment of the filing fee for at least a single class is a statutory requirement that must be satisfied before the expiration of the statutory period for filing the statement of use.  See TMEP §§1109.15, 1109.15(a).

When refusing registration on the above grounds, the examining attorney must issue a regular Office action with a six-month response clause.  This gives the applicant six months to establish that it met the statutory requirements on or before the expiration of the time for filing the statement of use.  See TMEP §1109.16(b).

1109.16(b)   Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Statutory Requirements

When the examining attorney determines that the applicant did not meet the statutory requirements within the period for filing the statement of use, the examining attorney must issue an Office action refusing registration on the ground that the applicant did not file a statement of use that meets the requirements of 15 U.S.C. §1051(d)(1).  If there is time remaining in the statutory filing period, the Office action should state that the deficiency must be cured before the expiration of the deadline for filing the statement of use.

If there is no time remaining in the statutory filing period, the examining attorney must issue an Office action with a six-month response clause, stating that the application will be abandoned for failure to timely file a statement of use that meets the requirements of §1(d)(1) of the Act.  Even though the statutory filing period has expired, the Office action must include a six‑month response clause.  This gives the applicant six months to establish that it met the statutory requirements on or before the expiration of the time for filing the statement of use.

If the applicant fails to respond to the Office action, the application will be abandoned for failure to respond.  If the applicant responds to the Office action, but does not establish that the requirements for filing a statement of use had been satisfied as of the expiration of the deadline for filing the statement of use, the examining attorney will make the refusal of registration final.  If the applicant does not respond, the application will be abandoned for failure to respond to the final refusal.

See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that the applicant did not comply with the statutory requirements for filing the statement of use within the statutory filing period.

1109.16(c)   Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Statutory Filing Requirements

In limited circumstances, an applicant may file a request for an extension of time to file a statement of use after filing a statement of use, in order to gain more time to comply with the statutory requirements for filing the statement of use (sometimes called an "insurance" extension request).  An applicant may file an extension request after filing a statement of use only if:  (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance.  37 C.F.R. §2.89(e)(1).  See TMEP §1108.03 regarding the time periods and requirements for filing an "insurance" extension request, and TMEP §1108.03(a) regarding the procedures for processing such a request.

The filing of an "insurance" extension request is not in itself a proper response to an Office action, and does not extend the six-month period for response to the Office action.  See TMEP §1109.16(d).

Example:  Assume that a notice of allowance issues July 3, 2009, the applicant files a statement of use on July 22, 2009, and the examining attorney issues an Office action requiring substitute specimens on August 6, 2009.  The applicant may file an "insurance" extension request on or before January 3, 2010, which would give the applicant until July 3, 2010 to make proper use of the mark.  However, the applicant must file a response to the Office action on or before February 6, 2010.  See TMEP §1109.16(d) for information about responding to an Office action in this situation.

1109.16(d)   Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use  

In limited circumstances, when the applicant files a timely "insurance" extension request in conjunction with or after filing a statement of use (see TMEP §§1108.03–1108.03(a), 1109.16(c)) and the examining attorney has issued an Office action, the six-month period for response to the Office action will expire before the statutory deadline for filing the statement of use.  To avoid abandonment, the applicant must respond within six months of the issuance date of the Office action, regardless of the expiration date of the time for filing the statement of use.

If the time for filing the statement of use expires after the time for responding to a nonfinal Office action, and the applicant believes that it can cure a deficiency raised in the Office action before expiration of the time for filing the statement of use, the applicant should timely respond to the Office action, stating in the response that it intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period.

If the applicant files such a response, the examining attorney must not suspend the application.  Instead, the examining attorney must make final any outstanding refusal or requirement.  The applicant will then have six months from the issuance date of the final Office action to cure statutory deficiencies.  Of course, applicant still must comply with the statutory requirements for filing the statement of use before the expiration date of the deadline for filing the statement of use.

Example:  If the deadline for filing the statement of use expires on July 3, 2009, and the examining attorney issues a final Office action requiring substitute specimens on March 4, 2009, the applicant has until September 4, 2009 to file the substitute specimens, but the applicant must verify that the specimens were in use in commerce on or before July 3, 2009.  

If the applicant files a proper response to the final Office action within six months of the date of issuance, and complies with the statutory requirements for filing the statement of use before the expiration of the period for filing the statement of use, the examining attorney will withdraw the refusal based on non-compliance with the statutory requirements for filing the statement of use.

If the time for filing the statement of use expires after the time for responding to a final Office action, and the applicant can overcome any grounds for refusal or comply with any requirement raised in the final action before expiration of the time for filing the statement of use, but not within the time for responding to the final Office action, the applicant must still file a timely response to the Office action. The response must state that the applicant intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period and request suspension of the application. The examining attorney will then suspend the application for only the amount of time remaining in the statutory period for filing the statement of use. The applicant will then have until the end of the extension period to overcome any grounds for refusal or comply with any requirement.

Example: The notice of allowance issues on September 30, 2010 and a statement of use and/or extension request is due on or before March 30, 2011. The applicant files a statement of use on October 15, 2010. On November 5, 2010, the examining attorney issues an Office action regarding the acceptability of the specimen and the applicant responds on November 8, 2010 but does not correct the specimen deficiency. The examining attorney then issues a final Office action on November 29, 2010 regarding the specimen issue. If the applicant files a timely "insurance" extension request on or before March 30, 2011, this would extend the time to perfect the statement of use to September 30, 2011. However, the applicant must still respond to the final Office action by May 29, 2011 (i.e., within six months of issuance of the final Office action). The response must include a request to suspend the application or the application will be abandoned for failure to respond. The examining attorney would then suspend the application until September 30, 2011, which is the date of expiration of the extension period and the deadline for complying with the statutory requirements for a statement of use.

If the applicant files a response to the final Office action prior to the expiration of the statutory period for filing a statement of use, and the response overcomes the grounds for refusal and/or complies with any requirement, the examining attorney will remove the application from suspension and withdraw the refusal.

If the applicant files a response to the final Office action prior to expiration of the statutory period for filing the statement of use, but the response does not overcome the grounds for refusal and/or comply with any requirement, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," thereby reissuing the final refusal, and the applicant will have six months to respond. See TMEP §716.06.

1109.16(e)   Applicant’s Recourse After Refusal of Registration

If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use within the time permitted, as set forth in 37 C.F.R. §2.88(e) (see TMEP §1109.01), the applicant may file a petition to revive under 37 C.F.R. §2.66.  However, if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(e), but the examining attorney refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use), the applicant cannot overcome the refusal by filing a petition to revive under 37 C.F.R. §2.66.  TMEP §1714.01(f)(ii)(B).  The applicant’s only recourse is to appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board.

See 37 C.F.R. §2.88(b) and TMEP §1109.16(a) regarding the statutory requirements that must be met within the statutory period for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).

1109.17   Withdrawal of the Statement of Use Prohibited

Once an applicant has filed a statement of use, the applicant may not withdraw the statement of use, even if the USPTO determines that the statement of use does not comply with the minimum filing requirements.  37 C.F.R. §2.88(g);  In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993).  Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed.

See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that applicant did not meet the statutory requirements for filing a statement of use before the expiration of the statutory deadline.

1109.18   Approval of the Statement of Use

Approval of the statement of use indicates that the mark is eligible for registration.  If the examining attorney determines that the application is in condition for registration, the examining attorney will approve the mark for registration under §1(d) of the Trademark Act, 15 U.S.C. §1051(d).  Before approving the mark for registration, the examining attorney must ensure that the information contained in the record is accurate, that all amendments filed by the applicant have been examined, that material that should be printed in the Official Gazette and on the registration certificate has been properly entered into the Trademark database, and that material that should not be printed has been deleted from the Trademark database.  See TMEP §817 regarding preparation of an application for publication or registration.  If an assignment has been recorded, the examining attorney should ensure that the ownership information in the Trademark database is updated to reflect the true owner of record.  See TMEP §502.02(c).  The examining attorney must also perform the appropriate transaction to ensure that the computer-generated notice of approval of the statement of use is issued.

If the applicant filed an amendment to the Supplemental Register with or after filing a statement of use, and the application is otherwise in condition to be approved for registration, the examining attorney must approve the statement of use and approve the application for registration on the Supplemental Register.  See TMEP §1102.03 regarding the examination of intent-to-use applications for registration on the Supplemental Register.