Statement of Use/Amendment to Allege Use for Intent-to-Use Application

Picking up from yesterday's post, let's get further into the additional forms attached to filing an Intent to Use application.

Once the Intent to Use application is filed, the USPTO will move ahead with the filing process as normal but once all the various red tape has been cut, they will need to hear from you that you're using the mark in commerce.

You let them know you're using the mark in commerce by either filing a Statement of Use or an Amendment to Allege Use. Now, it sounds confusing but this is essentially the same form - the only difference being as to the time when it's filed.

Amendment to Allege Use:

This is "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. With the AAU, the owner must submit one specimen showing use of the mark in commerce for each class of goods/services included in the application, and the required fee.

...must be filed before the date the examining attorney approves the mark for publication in the Official Gazette."

Statement of Use:

"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...must be filed within 6 months from the date the USPTO issues a notice of allowance. Failure to submit the statement of use in a timely manner results in abandonment of the application."

So the big difference here is that the Amendment to Allege Use is filed BEFORE publication and the Statement of Use is filed AFTER the Notice of Allowance is received.

Publication? Notice of Allowance? Huh? Here are the definitions for each but I'll be sure to devote another post to the application time line.

Publication:

"If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette.

The USPTO will send a Notice of Publication to the applicant stating the date of publication. Any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose."

Notice of Allowance:

"Written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed for registration. It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration.

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 filing a statement of use. 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 be abandoned."

"What the world really needs is more love and less paperwork."

True words, Pearl Bailey, but when it comes to trademarks, paperwork is the fuel that keeps the trademark machine running.

I'll devote a few posts to the different types of filings the USPTO requires. That being said, let's start at the beginning.

Trademark/Servicemark Application, Principal Register:

"Use this form to file an initial application for either a TRADEMARK for "goods" AND/OR a SERVICEMARK for "providing services" -- this form is appropriate for both."

As the USPTO does, we'll use the term trademark to denote both types of marks. When applying for registration for your trademark, this is the application you'll start with.

Provided within quotes is straight from the USPTO & my explanations are underneath. Within this application, there are two routes you can go:

1) Use in Commerce

"For the purpose of obtaining federal registration, 'commerce' means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. 'Use in commerce' must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark."

Basically, this means that if you're claiming the mark is in use in commerce, you're telling the USPTO that the mark is actually being used either across state lines or between the US & another country.

This is a point of confusion for many folks we talk to so let's break this down a bit. Getting your DBA, incorporation, LLC, etc. or obtaining a domain name DOES NOT qualify as use in commerce. Making a sale in at least 2 states DOES qualify as use in commerce.

"Generally, acceptable use is as follows:

For goods: the mark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in commerce.

For services: the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. If you have already started using the mark in commerce, you may file based on that use."

This was discussed in detail in my post about specimens - read further here.

2) Intent to Use

"Applicants who have not yet used (in commerce that can be regulated by Congress) the mark they wish to register may file a trademark application under this filing basis."

This one's easy to understand -- if you haven't used the mark at all OR if you've only made sales within one state, you'll file as an Intent to Use.

One important note: the USPTO will NOT register the mark until the applicant "begin(s) actual use of the mark in commerce and file an Allegation of Use."

More details to come...

How to Know When to Trademark Your Logo

I got a really great question from a reader in response to my first call for questions:

"I have a product that I want to market and have a name. I do not yet have a mark for this product but want to protect the name. Do I file intent to use and can I do that without having the actual mark?"

There's two distinct questions here – (1) the use of Intent-to-Use & (2) adding a logo after the fact.

(1) Intent-to-Use Trademark Applications: I will definitely dedicate a more detailed post to these two types of applications but to sum it up…

A mark, be it a name, logo or slogan, must be in use in at least 2 states OR between the US & any foreign country in order to obtain Federal trademark registration. However, an applicant can file the mark even if they're only doing business in one state OR not in business at all.

There is a hiccup in filing an Intent-to-Use application in that the USPTO is going to need to know that the mark is being sold across state lines or in another country. This requires another form, a $100 and a specimen.

(2) Adding a Logo to Your Trademark Application:

The USPTO is vague & clear about this matter in a way that really only the Federal government could be:

"The examining attorney will determine whether any proposed amendment of the mark is acceptable. A change is not acceptable if it materially alters the character of the mark. The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark."

Eh, what? Okay, so basically, if you intend to add anything at all to your trademark application AFTER it's been filed, it has to be something very, very slight. For instance, you may be able to delete generic or descriptive words from your filing.

But, of course, the USPTO has a caveat about that too: "For example, the deletion of the generic name of the goods or services would not generally constitute a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression."

So, in a long winded way, it's probably not possible to add a logo to a pending application as the addition of the logo will more than likely "materially alter" the mark. But as with most trademark issues, it's recommended that you consult with a trademark company or attorney about your specifics.

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