If trademark applicants aren’t using their mark in commerce, the applicant can file an Intent to Use Application and generally, if all goes well, receive a Notice of Allowance. Within six months of being granted the Notice of Allowance, the applicant generally has to prove that it is now using the mark or request up to five six-month extensions. The USPTO requires a specimen to prove use in commerce when a Statement of Use is filed.

The requirements for filing a Statement of Use with the USPTO typically include:

• A $150 per class USPTO fee.
• A specimen of the mark showing that it is actually in use in commerce.
• Verification that the mark is in use as indicated on the application (signed subject to perjury).

A Statement of Use is generally due within six months from when the USPTO issued the Notice of Allowance, or within six months of a previously granted extension.

Generally, missing the deadline means the application will be considered “abandoned.” Future efforts to register the trademark will typically require the applicant to start all over including payment of new USPTO filing fees.

In addition to Trademark Engine’s service fee, the USPTO charges $100 per class, which is the USPTO filing fee.

According to 15 U.S.C. § 1127, a mark is considered “in commerce” when used in the following ways:

With regard to goods:

Use in commerce generally occurs when the mark:

• (A) is placed in any manner on the goods or their containers, the displays associated therewith or on the tags or labels affixed thereto (if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale), and
• (B) the goods are sold or transported in commerce.

With regard to service:

Use in commerce generally occurs when the mark is:

• used or displayed in the sale or advertising of services and the services are rendered in commerce, or
• the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

Typically, a specimen is a real-world sample of how the mark is actually in use with the goods and/or services identified in the application. It is what the consumers actually see when they are purchasing the goods or services.

Here are some more detailed tips from the USPTO:

Specimens for Goods (Products)

A specimen for goods usually shows the mark on the actual goods, on labels/tags affixed to the goods, on packaging, or in a product display for the goods (like a window display). Advertising materials are generally not acceptable as a specimen for goods, nor are materials used to carry out your daily business (e.g., invoices, packing slips, etc.).

The USPTO typically accepts the following specimens for goods:

• A photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
• Product labels and tags showing the mark (e.g., the label on a t-shirt)
• Product packaging showing the mark (e.g., detergent soap packaging)
• Signage used in a product display at a store (e.g., a photograph of the display)
• A webpage showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a photograph of a computer laptop, the mark for the laptop appearing above the photograph, the price appearing below the photograph, and a shopping cart button/link appearing on the page)
• For downloadable software, copies of the instruction manual and screen printouts from (1) web pages showing the mark in connection with ordering or purchasing information or information sufficient to download the software, (2) the actual program that shows the mark in the title bar, or (3) launch screens that show the mark in an introductory message box that appears after opening the program

Specimens for Services

A specimen for services generally shows the mark used in the sale, rendering, or advertising of the services. A consumer should be able to directly associate your mark with the services you identified in the application on the specimen.

The USPTO typically accepts the following specimens for services:

• Print or Internet advertising
• Brochures and leaflets
• Menus for restaurants
• Business cards and letterhead
• Marketing and promotional materials
• A photograph of business signage and billboards
• A photograph of a musical band performing with the band's name displayed during the performance (e.g., on the band's drum)

*Specimens consisting of advertising, marketing, and/or promotional materials must show a direct association between the mark and the services. However, if your mark itself references the services, the specimen would show a sufficient direct association (e.g., ABC MEDICAL for a medical clinic).

Applicants who are not using the mark in commerce within six months after receiving the Notice of Allowance from their Intent to Use application may need to file an extension request and the required fee(s) to avoid abandonment.

The USPTO generally allows applicants to file up to five six-month extensions. Click here to read more about Trademark Engine’s extension services.

In addition to Trademark Engine’s service fee, the USPTO charges $150 per class, which is the USPTO filing fee for filing an extension.

Under such circumstances, an applicant can do what is referred to as “dividing an application.”

There are additional UPSTO fees to do this because it creates what the USPTO calls a “child” and “parent” application. There is also a slightly increased Trademark Engine service fee because of the extra processing.

But, dividing an application is an option that some companies choose in order to register a mark as one class of goods while preserving rights on another. This can allow extension of the six-month deadline for the class of goods not yet in use, but register for the class of goods or service that are already in use.

If an applicant is granted a Notice of Allowance for multiple classes, but decides not to pursue a registration for one or more of those classes, the applicant may simply disclaim the unwanted class when filing the Statement of Use.

By disclaiming a class, the USPTO will generally treat the application as abandoned as to that class while proceeding with the class or classes still being pursued.

To understand this, let’s look at the common example of clothing. Many people file an Intent to Use under Class 25 for clothing and then list, shirts, pants and shoes. In this example, let’s say the applicant is selling shirts, but not pants or shoes.

Just like with a class, any description of goods within a class not included in the Statement of Use generally will be permanently deleted from the trademark registration. The applicant will have to file a new trademark application to cover any of the items left off of the Statement of Use.

While the USPTO may request a specimen showing the use for one type of good or service only within the class (for our example, a shirt), the applicant will have to state, subject to perjury, that it actually is using the mark for all of the goods listed on the Allegation of Use.

Therefore, an applicant only selling some of the items within a class may want to file an extension or divide the application.