Why Get Help Filing Your Statement of Use to the USPTO?


  • An applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17. Mistakes jeopardize the trademark application. See Statement of Use refusals.
  • The statement of use must be filed within 6 months of the Notice of Allowance or an extension must be filed. Missing the deadline results in the trademark application going abandoned.
  • A Statement of Use is a sworn statement made to the USPTO and a person is charged with knowing what they  are signing. By failing to make any appropriate inquiry, someone may sign the statement of use with a ‘reckless disregard for the truth.' but even an honest mistake can hurt the application or registration.
  • The price is great! $199 for the statement of use (per class) includes the $100 fee to the USPTO per class.
  • Specimen errors are common and difficult to overcome. Substitute specimens used to overcome refusals had to have been in use for the same time as the original specimens so it is too late to correct errors and make new uses after a refusal has been received because Statements of Use cannot be withdrawn.
  • We do good work and understand trademark strategy. Looking forward can improve results. At the end of the day, having a plan and working the plan is better than risking investor’s money .  A Statement of Use is only one step in the trademark application process but using trademark law to your advantage can strengthen your position.
  • Everything about a trademark application and registration are public record and there are lots of potentially harmful records out there. When we research for trademark oppositions and cancellations, prior records are often a source of evidence. A bad specimen of use may even be evidence of non-use of a trademark.
  • A strategy to file an Amendment to Allege Use instead of a Statement of Use may be a better strategy in some cases. Experience matters.
  • A statement of use may not expand the scope of previous acceptable identification. Experience matters.



Frequently Asked Questions About Statements of Use (SOU)

What does ‘Allowed for Registration - Principal Register (SOU accepted)’ mean? This means the Statement of Use has been approved for an Intent to Use application that has already been through its Opposition Period with no opposition and the trademark should register in 4-6 weeks.


What does ‘Approved For Pub - Principal Register’ mean? This means the final review prior to publication has been completed, application will be published for opposition.


What does ‘Notice of publication’ mean? This means the final review prior to publication has been completed and the application will be published for opposition (but this is not the publication date).


What does ‘Published for opposition’ mean? Under U.S. Trademark law, 15 U.S.C. §1062(a), a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This Publication and [short] time period (30 days) give someone who may be harmed by a registration of a federal trademark a way to oppose (or object to) the registration. Not just anyone can object/oppose, only any person or entity who believes that he/she/it would be damaged by the registration of the mark and can prove both Standing  and Grounds.


What does  ‘New Application Entered In Tram’ mean? This means that the USPTO has accepted the new application and has put it into TRAM, the USPTO database. What is TRAM? The Trademark Reporting and Monitoring (“TRAM”) System. For applications filed through TEAS, the data provided by the applicant is loaded directly into the USPTO’s automated TRAM System. For applications filed on paper, the application documents are scanned into the Trademark Image Capture and Retrieval System (“TICRS”), and the data is manually entered into TRAM. TRAM is used by USPTO employees to obtain information about the location and status, prosecution history, ownership, and correspondence address for applications and registrations. This information is available to the public through the Trademark Status and Document Retrieval System (“TSDR”) database, available on the USPTO’s website at http://tsdr.uspto.gov.


What does ‘Allowed for Registration - Principal Register (SOU accepted)’ mean? A Statement of Use (SOU) is one form of An Allegation of Use, a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. (Since most trademarks are now filed electronically, this is usually an electronic signature.) With the Allegation of Use, the owner must submit: a filing fee of $100 per class of goods/services; and one specimen. A specimen is a sample of the use of the mark that acts as evidence that the mark has been properly used in commerce for each class of goods/services. See Preview AAU/SOU FORM. The actual form for filing the allegation of use is available at http://www.uspto.gov/teas/index.html. Note that the type of sample appropriate for submission is different for a trademark (sales of goods) than it is for a service mark (sales of services). An Amendment to Allege Use (AAU) is another type of Allegation of Use but differs in the time period when it is submitted. See Additional Requirements For Intent to Use Application for more information.  


What is a ‘NOA Mailed - SOU Required From Applicant’?  A written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette is called a Notice of Allowance (NOA), and has consequently been allowed for registration. It does not mean that the mark has registered yet. Notices of allowance are only issued for applications that have been filed based on "Intent to Use". The Notice of Allowance is important because the issue date of the Notice of Allowance establishes the due date for when an applicant is required to file a Statement of Use (SOU). After receiving the Notice of Allowance, the applicant must file a Statement of Use or a request for an extension of time to file a Statement of Use within 6 months from the issue date of the Notice. If the applicant fails to timely file a Statement of Use or a request for an extension of time to file a Statement of Use, the application will go abandoned. TEAS Statement of Use Received is the status message when the SOU is received by the USPTO.


What does ‘Statement Of Use Processing Complete’ mean? This means that changes have been made to the trademark record to show that the SOU has been received but not yet approved.



Help From USPTO

The USPTO offers new (22Feb2013) general purpose advice from http://www.uspto.gov/trademarks/law/specimen.jsp:


 "Specimen Refusal" and How to Overcome This Refusal

What is a "Specimen Refusal"?


The USPTO issues a specimen refusal when your sample of how you use your applied-for mark (the “specimen”) does not actually show the mark in use in commerce for your particular goods or a specific international class of goods identified in the application, notice of allowance, or allegation of use.   Note that this refusal never issues for applications filed under Section 44 or 66(a) of the Trademark Act, because those applications do not have specimens.


How Can I Overcome This Refusal?

Below are the two possible response options for overcoming a specimen refusal.  


(1) Submitting a different specimen (a verified “substitute” specimen) that was in use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use; or prior to the expiration of the deadline for filing a statement of use) and that shows proper trademark use of the same mark for each international class identified in the application, notice of allowance, or allegation of use.


NOTE:  You may have to amend the dates of use if the substitute specimen was in use in commerce on different dates than those in the application or amendment to allege use/statement of use.


Examples of the type of specimens normally acceptable for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  Webpages are acceptable specimens for goods when they include a picture or textual description of the goods closely associated with the mark and sufficient information to order those goods (e.g., a visible weblink to order the goods, an offer to accept orders via phone or e-mail).


For more information on substitute specimens, see 37 C.F.R. §§2.59(a), 2.71(c); TMEP §§904.05,§904.03 et seq.



Federal Registration of Trademarks

Why is registering a smart choice? To capture goodwill into a protectable asset and to keep newcomers to the market from using your name and jeopardizing your success. Federal Registration of a Trademark with the USPTO expands existing trade rights or common law rights in a name, logo, symbol, trade dress or other type of trademark or service mark so that a trademark owner can capitalize on the goodwill and customer recognition associated with the mark. A federal registration on the Principal Register can be used to stop others from taking your name or names confusingly similar to it to sell similar products and can be used to stop counterfeiting imports or state or local counterfeiters.

About 40-50% of trademark applications never register and many are because the newcomer’s or junior’s trademarks are too similar to marks that are already registered (prior users or seniors). For someone with a federal registration, the USPTO stops new similar junior applications by issuing Likelihood of Confusion refusals (the most common refusal) without additional cost to the senior user every time they do it. A senior user without a registered mark has to try to stop all these newcomers themselves at their own cost each time. If the USPTO trademark examiner uses your registered trademark to stop even just one newcomer from registering a trademark very similar to yours, your investment may have already paid off.


SUPERCHARGING YOUR RIGHTS: The list below compares the Principal Register and Supplemental Register and Common Law Rights. Principal Registration of a trademark gives the most rights because it takes the basics of trademark rights from common law and boosts it by adding features. (All the YES rows are the extra features.)

Common law rights are based on prior use, distinctiveness, ownership, using a trademark as a trademark, and other principles that have helped trademark owners to protect their trademarks in the geographic areas that they trade in. Federal registration of trademarks on the Principal Register takes all these common law rights and adds a few more benefits that were added by the statute (the Lanham Act), called statutory rights. Under common law, a trademark is only protected in the geographical area where sales or marketing have actually occurred (“in trade” and “in commerce”). Federal registration spreads rights throughout the U.S. even if a registrant has only sold in a small geographical area.


EVEN MORE BOOSTING: Third parties like Google, Yahoo, Bing, Twitter, Facebook, and others boost registration rights even further by offering their own protection to trademark owners that can clearly prove their rights to a mark and a Principal Registration works best.

The table below lists the rights that the federal government gives you if your federal trademark application matures into a registration (see the YES rows) but there are more rights that third parties grant to federal trademark registrants. Third parties such as Google, Yahoo, Microsoft, Bing, Twitter, Facebook and others will help trademark owners to protect their rights. For examples of increased rights provided by third parties to trademark owners, see GOOGLE ADSENSE TRADEMARK COMPLAINT FORM, MSN TRADEMARK SUPPORT, MICROSOFT ADVERTISING GUIDELINES, TWITTER TRADEMARK POLICY.


PROTECTING YOURSELF MEANS GETTING THE RIGHT HELP: At the end of the day, a trademark owner is responsible for protecting their own rights. A owner must claim and enforce their rights in order to receive the benefits. Online medias, advertisers, social networks and others will help you to protect your rights if you can prove those rights clearly to them with a federal registration of a trademark and only if you take the initiative to do so.

Not Just Patents® Legal Services is the right help. Our success rate with registering trademarks is very good and our costs are not high which can turn out to be a great investment. Our success rate with answering office actions is also very good but unfortunately, many refusals given to junior users for Likelihood of Confusion stick because the junior user really is jeopardizing the success of someone else who used the trademark first and registered their trademark first. But not always. Sometimes the one who registered first was not the first to use the trademark and enforcing rights requires going further and opposing or cancelling the trademark of the owner who registered first but didn’t use first. We can help with this too.


BUT WHAT IF THE SERVICE YOU BOUGHT DIDN’T DO A GOOD JOB ON YOUR TRADEMARK REGISTRATION? A bad application or no registration or even Supplemental Registration means less rights and rights that are harder to enforce. But more expensive doesn’t necessary mean more rights, a Not Just Patents ® Federal Registration of a Trademark is NOT expensive. A lawyer that lists trademarks as one of many, many services that they provide may be just as bad as a service that doesn’t use any lawyers/experts at all and disclaims that their service does not replace competent advice. Call us in the U.S. at 1-651-500-7590: We can help.

This web site is supposed to be enough information to let you know that you would rather succeed than not and that a trademark can be an incredible tool and investment. But this web site, or any web site short of USPTO.gov, is not enough information to make up for knowing all the rules and exceptions in the USPTO trademark guide, the TRADEMARK MANUAL of EXAMINING PROCEDURE (TMEP) (over 1500 pages), and the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) (over 1300 pages). Knowing these rules is really important; being able to apply these rules to facts is even better.


Federal USPTO Trademark Registration

There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:

  • Can be used against future applications of confusing similar marks by the USPTO;
  • Mark is easy to find for search reports;
  • Owner can use ® to symbolize federal registration;
  • Incontestability of mark after 5 years;
  • Statutory presumption of validity;
  • Statutory presumption of ownership;
  • Statutory presumption of distinctiveness or inherently distinctive;
  • Statutory presumption of exclusive right to use the mark in commerce;
  • Provides access to anti-counterfeiting statutes. For example, a trademark on the Principal Register can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods;
  • Ability to bring federal criminal charges against traffickers in counterfeits;
  • Use of the U.S. registration as a basis for prior use to obtain registration in foreign countries without having actual use in commerce in those countries;
  • Owner gets trademark rights in all U.S. states even if only in commerce in less states.

A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.



Not Just Patents ® Legal Services provides a very economical package for other Trademark Registration services. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark. We can provide each step individually or as a trademark registration package. A trademark registration (or trademark application) package includes: a ‘right to register’ step (which includes a distinctiveness analysis step and a function as a mark analysis), a trademark search (federal, state and common law search) and conflict analysis step, a goods and services identification step, a specimen review step, a state registration step, a federal registration step, and a federal Office Action response step. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm to answer a USPTO Office Action Refusal at an hourly rate. Call us at (651) 500-7590.


Not Just Patents® and AIM HIGHER® are a registered trademarks of Not Just Patents LLC for Legal Services on the Principal Register.


Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

WP@NJP.legal


199StatementOfUse.com

Tie It Up

Securing the Right IP


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


$199 Includes $100 USPTO filing fee per class

Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


©2008-2016 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us