Trademark Statement of Use and Allowance

What is a Notice of Allowance?

A notice of allowance is a 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; 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 a filing basis of intent to use a mark in commerce under Trademark Act Section 1(b). The applicant has six months from the mailing date of the notice of allowance in which to either file a statement of use (SOU) or file an extension request. More than one extension request may be filed, but a limit exists on the total number of extension requests permitted and the timeframe that they must be submitted within.

What is a Statement of Use (SOU)?

A Statement of Use (SOU) is one of the official forms used by the United States Patent and Trademark Office. It can only be filed once a business has started to use a trademark. This means you can't register a trademark just to tie it up; you need to use it in commerce. Ways to prove a trademark's use include displaying it on products, packaging, or other marketing tools.

If you filed your trademark on the basis of intent to use, you must file a Statement of Use to show you are using it to sell goods and/or services. If you aren't ready to file the SOU, you need to file a Request for Extension of Time to File a Statement of Use within six months of when your Notice of Allowance was issued. The extensions can be filed every six months for up to 36 months.

Without filing the Statement of Use, your trademark application cannot be finalized and approved. The U.S. Patent and Trademark Office won't publish trademarks in the official gazette unless they're actively used. This helps lessen the confusion that might exist if multiple trademarks get registered but never used. If you aren't ready to start using the trademark in your commerce stream, then you shouldn't file the Statement of Use, as there is the requirement that you show proof the trademark is, in fact, already in use.

This follows the Notice of Allowance and specimen sample, wherein a 30 day opposition period starts. During this timeframe, the public has the opportunity to claim that a trademark that's intended for use is infringing on someone else's trademark, or the design is too similar to existing trademarks already actively in use in commerce.

What is a specimen?

A specimen is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace with the goods or services in your application or registration maintenance filing. It’s what consumers see when they are considering whether to purchase the goods or services you provide in connection with your trademark. 

For goods, a specimen shows your trademark as actually used in commerce with your existing goods in a way that directly associates the trademark with the goods. For example, a specimen could be a label or tag attached to your goods that shows your trademark, a product container or packaging showing your trademark on the packaging, or a website displaying your trademark where your goods can be purchased or ordered.

For services, a specimen shows the trademark as actually used in commerce with your existing services in a way that directly associates the trademark with the services. For example, a specimen could be an advertisement, brochure, website printout or other promotional material which shows your trademark used for the services, business signs where the services are rendered showing your trademark, or a service vehicle showing your trademark.

An acceptable specimen must:

  • Be a real example of how you use your trademark in commerce in providing your goods or services (not a mock up, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your mark might appear).

  • Show your trademark used with the goods or services listed in your application.

  • Depict the same trademark as shown on your drawing .

  • Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media).

  • Be an appropriate type of specimen based on whether you have goods or services. For example, advertising material is an acceptable specimen for services, but not for goods.

  • Show your trademark used in a way that directly associates the mark with the goods or services.

  • Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services in your application (it function as as a trademark).

  • Include the URL and date you accessed or printed the webpage in your submission.

Examples of Acceptable Specimens

This specimen (for YETI) clearly shows the mark in use on the actual product.

This specimen (for YETI) clearly shows the mark in use on the actual product.

This specimen (for NIKE) shows the mark in use on the product packaging which is also acceptable.

This specimen (for NIKE) shows the mark in use on the product packaging which is also acceptable.

This specimen (for FREE PEOPLE) shows the mark in use on the tag of the product which is acceptable.

This specimen (for FREE PEOPLE) shows the mark in use on the tag of the product which is acceptable.

This specimen (for BEAUTY OF JOSEON) does have the mark on the product but it is difficult to see, however, it clearly shows the product and the mark in use on the webpage. This is an acceptable specimen that can be submitted to the USPTO. Note: This

This specimen (for BEAUTY OF JOSEON) does have the mark on the product but it is difficult to see, however, it clearly shows the product and the mark in use on the webpage. This is an acceptable specimen that can be submitted to the USPTO. Note: This specimen would need to be accompanied by the URL and the date the webpage was accessed.

Important Notes for Acceptable Specimens

Specimens for goods are…

•The goods themselves

For example, you could submit a photo showing your trademark on the bottom of a coffee mug or on the cover of a software instruction manual. 

•Labels and tags for the goods

For example, you could submit a photo showing your trademark on a label sewn on the neckband of a t-shirt, a photo of the goods showing your trademark on a label. A label or tag that is not shown physically attached to the goods may be accepted if, on its face, it clearly shows the mark in actual use in commerce. To clearly show actual use in commerce, the tag or label would, in addition to showing the mark, include informational matter that typically appears on a label in use in commerce for those types of goods such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.

•Packaging for the goods

For example, you could submit a photo showing your trademark on a laundry detergent box.

•Sales displays where the goods are sold

For example, you could submit a photo of a counter display showing your trademark along with hair-care products in a beauty salon that uses those products.   

•Webpages selling the goods

For example, you could submit a screenshot or printout of a webpage showing a necklace for sale, the trademark on or in close proximity to the necklace, the price, and a shopping-cart button. You must include the URL and the date you accessed or printed the webpage in your submission. You can include it in your screenshot or printout.

•Software as goods.

For example, you could submit a screenshot of a software launch screen with the trademark in an introductory message box, or a screenshot of a webpage with enough information to download the software and the trademark appearing in the title bar.

Specimens for services are…

•Online advertising or printed matter showing a direct link association between your trademark and the services

For example, you could submit a photo or screenshot of a newspaper or online advertisement for financial investment services.

•Television and radio commercials for the services

For example, you could submit an MP3 file of a television commercial for laboratory testing in the field of genetics and ancestry.

•Marketing material showing a direct association between your trademark and the services

For example, you could submit a scanned copy of brochures and leaflets advertising or marketing various hospital services.

•Signage where the services are rendered

For example, you could submit a photo of business signs on the front of a grocery store.

•Material used in the providing/rendering of the services.

For example, you could submit:

  • A photo or scanned copy of a menu for restaurant services.

  • A photo of a band performing on stage with the band's name displayed during the performance (e.g., the band name on the band's drum) for live musical entertainment services).

  • A screenshot of the title and launch screens for ongoing television programs and video game entertainment services.

Invoices showing a direct associatation between your trademark and the services

For example, if your services are printing and copying services, you could submit a photo or scanned copy of an invoice showing your trademark that includes the wording COPY SHOP) at the top of the invoice.

•Business cards and letterhead showing a direct association between your trademark and the services

For example, you could submit a photo or scanned copy of business cards and letterhead that indicate you provide publishing services.

 Examples of Unacceptable Specimens

While this shows the mark on the shirt, this would be considered a decorative element and would not be acceptable.

While this shows the mark on the shirt, this would be considered a decorative element and would not be acceptable.

This mark is also clearly shown, but it is a printer's proof and not a photo of the actual box being used in commerce, this would be considered unacceptable.

This mark is also clearly shown, but it is a printer's proof and not a photo of the actual box being used in commerce, this would be considered unacceptable.

This image would be rejected as it does not show the mark on the product AND it is a digital render of the product. This would be unacceptable.

This image would be rejected as it does not show the mark on the product AND it is a digital render of the product. This would be unacceptable.

Common Reasons Why Specimens Are Refused.

  • The mark on the Application and the mark on the Specimen are not identical.

    If the mark on the specimen does not match the mark on the application, it will be rejected. This means that the whatever is filed needs to be IDENTICAL to what is shown on the specimen. It is imperative that you check the application summary that is sent to you before filing to make sure the mark is correct. If you approve the application summary and there is a mistake, you will need to submit additional fees to refile a corrected application.

  • The Trademark is shown incorrectly on the specimen

    The specimen will be rejected if the mark is shown incorrectly. This can either be something like a spelling mistake or a completely different trademark being shown. For example, if the application was for HAPPY HIPPO, but the specimen showed EXCITED HIPPO, this would be rejected.

  • The Specimen or Application have different/extra letters or spacing.

    To reiterate, the marks on both the application and specimen need to be IDENTICAL and adding spaces or extra letters to your specimen can be detrimental. For example, if you file for the trademark HAPPYHIPPO, but your specimen is shown as HAPPY HIPPO, HAPPYY HIPPO, HAPPYYHIPPO, etc. it will be rejected. Adding hyphens or similar would also lead to the specimen being rejected (i.e. HAPPY-HIPPO).

  • The Specimen does not match the goods and/or services listed in the Application.

    The specimen must match the goods or services that were listed in the initial application. If the application was filed with the mark being used for skincare in international class 003, but the specimen showed the mark being used for vitamins in class 005, the specimen would be rejected.

Other Examples of Why Specimens are Refused

 Your specimen does not show the trademark in your drawing.
​For example, your specimen:

  • Does not show your trademark clearly; it is illegible

  • Does not show your entire trademark (shows only a part of the trademark in your drawing)

  • Does not show the exact trademark in the drawing, but a variation of it.

  • Your specimen does not show trademark use with the goods or services in your application.
    For example, your application identifies t-shirts as your goods, but the specimen shows your trademark advertising your custom t-shirt printing services.

  • Your specimen does not show your own use of the trademark.
    For example, your specimen is a press release sent exclusively to news media or your specimen is a printed article resulting from such a release. However, publicly available press releases, such as on your website, are acceptable to show use for services, but not goods.

  • Your specimen is not in actual use in commerce.
    For example, your specimen:

    • Is a printer’s proof

    • Is a digitally created or altered image or mock-up

    • Is material used only to conduct your daily business of selling goods (e.g., packing slips, business stationery, order forms, waybills, and bills of lading)

    • Is only a drawing or depiction of your trademark

    • Is a webpage that doesn't include the URL and date accessed/printed

    • Shows that your goods have not yet been sold or transported (e.g., pre-sale orders for goods not yet available)

  • Your specimen is not an appropriate type for your goods or services.
    ​For example, your specimen is only advertising for goods, such as:

    • A webpage with insufficient ordering or purchasing information

    • A webpage for downloadable software with no means to download or purchase the software.