Are you ready? Choose between Intent To Use (ITU) and Statement Of Use (SOU)
Understand the timeline, process, and fees for ITU and SOU
Save time and secure your application with an IP lawyer [highly recommended]
1. What is the difference between “Intent To Use” and “Statement of Use”?
The United States Patent and Trademark Office (USPTO) offers 2 options for filing a US trademark application. The option you choose depends on whether you are already using your mark commercially in the USA for all the goods or services listed in your application or not.
Intent To Use (ITU)
Filing an ITU enables your company to apply for a US trademark even if you are not using your mark in commerce yet. This option requires a little bit more paperwork, but it is worth using when you don’t have any business in the USA yet.
This ITU filing relies on your sworn statement that you have the bona fide intent to use the mark in commerce. To prevent any legal action from a third-party who could try to impede the registration process, you will need to document your efforts to start and develop your business involving the goods or services listed in your application: having a business plan, performing preliminary business activities, creating sample products, etc.
Once you have filed your ITU application, you have 6 months to start using your mark in commerce. If, after 6 months, you still cannot demonstrate any commercial use of your mark, you will have to request an Extension from the USPTO, otherwise the application will be abandoned (and you will have to pay fees).
Statement Of Use (SOU):
Filing an SOU applies as soon as you can demonstrate the commercial use of the mark on all goods or services listed in your application.
The commercial use of a mark is defined by the USPTO as follows:
- A mark is in use in commerce with goods when (1) the mark is placed on the goods, packaging for the goods, or point-of-sale displays associated with the goods (including webpage displays), and (2) the goods are actually being sold or transported in commerce.
- A mark is in use in commerce with services when (1) the mark is used in the sale, advertising, or rendering of the services, and (2) the services are actually being rendered in commerce.
- Use in commerce must be in the “ordinary course of trade”, and not just token use made solely to reserve rights in a trademark or service mark.
In order to file a SOU, you will need to provide the following information:
- A signed statement that you are using your mark in commerce
- The date that you first used your mark anywhere with your goods or services
- The date that you first used your mark in commerce with your goods or services
- One specimen for each class of goods or services in your application. A specimen is a real-life example of how you use your mark on your goods or services. A mentioned above, company formation documents cannot be considered as specimens: you will need some marketing assets and actual transactions with clients.
2. What is the process and timeline from filing the USPTO application to obtaining trademark registration?
Please note that you will need approximately 15 days to 3 weeks to prepare the application with your IP lawyer before you (or your lawyers) submit the application to the USPTO.
USPTO’s typical fee schedule and timeline is as follows:
Statement of Use (SOU):
| Timeline | Process and Fees |
|---|---|
| D = Day of Application | Fees = $225 to $400 per class of goods/services, to be paid at the time you file the application. |
| D + 2/3 months = Application Review | Your application will be assigned to a USPTO examining attorney for review. If all legal requirements are met, the USPTO examining attorney will approve your mark for publication in the Trademark Official Gazette. [Fees = $0] |
| D + 4 months = Application Publication | Your application is published in the Official Gazette. [Fees = $0] |
| D+ 10 months = Notice of Allowance | A Notice of Allowance (NOA) will be issued by the USPTO, indicating your mark has been “allowed” for registration (but has not yet been registered). [Fees = $0] |
| D+ 12 months = Registration | The USPTO issues a registration. [Fees = $0] |
| Post-registration maintenance |
|
Intent To Use (ITU):
| Timeline | Process and Fees |
|---|---|
| D = Day of Application | Fees = $225 to $400 per class of goods/services, to be paid at the time you file the application. |
| D + 2/3 months = Application Review & Amendment Option |
|
| D + 4 months = Application Publication | Your application is published in the Official Gazette. [Fees = $0] |
| D + 4/10 months = Statement Of Use | IF you are ready to demonstrate that your mark is used in commerce and wish to claim use of your mark in commerce AND you have not filed an Amendment to Allege Use before your application was published in the Official Gazette, you can file a Statement of Use between the date your application is published in the initial Gazette and the end of the 6-month bona fide period that applies to your Intent to Use application. Fees = $100 per class of goods or services. |
| D+ 10 months = Notice of Allowance |
|
| D+ 12 months = Registration | The USPTO issues the registration. [Fees = $0] |
| Post-registration maintenance |
|
Potential issues and delays:
- Your application is denied or requires amendments: if the USPTO examining attorney decides that not all requirements have been met, they will issue a letter (Office action) explaining the reasons for refusal and any technical or procedural deficiencies in the application. If only minor corrections are required (.eg. amendments to the description or class identification), the examining attorney may contact the applicant by telephone or email.
- You fail to act upon messages sent by the USPTO attorney: if the USPTO attorney sends an Office action, the applicant must respond within 6 months of the mailing date of the Office action, or the application will be declared abandoned. In that situation, a $100 fee is required to revive and resume the application.
- You have made a mistake in your filing: if you discover an error in the application data, you must file a Voluntary Amendment (preview). The USPTO attorney will review your request and determine whether this is a minor amendment, or whether you need to file a new application (with new fee, new timeline, and no reimbursement for the previous application).
- You have missed a deadline: it is important to check the status of your application through the Trademark Status and Document Retrieval (TSDR) system every 3-4 months after the initial filing of the application; otherwise, you may miss a filing deadline, which could result in delays or even abandonment.
3. Do I need a lawyer to file a trademark in the USA?
You are, of course, entitled to file a trademark application by yourself. You will then work directly with the US Patent and Trademark Office (USPTO), which offers a convenient online application tool, the Trademark Electronic Application System (TEAS) .
However, since the US process for registering a trademark is quite specific, you may encounter some difficulties and even jeopardize your application.
We strongly recommend that you ask a lawyer who is specialized in Intellectual Property to assist you with the process. The lawyer will:
Complete a comprehensive trademark clearance search to determine whether it’s possible to register your mark: as a company, you could run a search yourself through the USPTO TESS database, but lawyers have access to additional databases and interactive resources that help better assess whether anyone already claims trademark rights in wording/design that is similar to yours and used on related goods/services through a federal registration. Should you also wish to check whether your US trademark can be extended to other countries in the future, your lawyer can help where the USPTO cannot.
Provide actionable recommendations on your trademark application, including likelihood of being approved by the USPTO (it’s no fun to spend months on a trademark application to end up with a refusal) and advice on how difficult it may be to protect your mark in the future (from competitors, homonyms, me-too newcomers, etc.).
Optimize your application: in order to meet the USPTO’s requirements, your lawyer will:
- Identify the exact mark format(s) you need to file for: a standard character mark, a stylized/design mark, or a sound mark.
- Describe your products and services accurately: the USPTO’s attorneys have rigorous expectations regarding this description and the approximate jargon of a layman is not up to snuff. You lawyer will help you compose a concise, clear-cut, and legally acceptable description.
- Define the exact class or classes your products or services belong to: US nomenclature is quite specific, and you may need to file for several classes if your products’ or services’ description is too broad (sometimes you have to, but why pile up classes if it is not necessary?).
Handle the legwork: from the moment you have sorted out the mark’s format and the products’/services’ description and class(es), your lawyer will complete the filing for you, interact directly with the USPTO agent if the latter needs clarification, and follow-up with the USPTO’s notification and deadlines.
Be USPTO’s main contact person: very often, the trademark application and registration process fails because a problem arises at some point with the applicant’s email address. If you happen to change your email address, or if the person in charge of the trademark process at your establishment leaves the company, the USPTO’s email will not reach you unless you remember to update your email address in the USPTO’s electronic system. Having a lawyer centralizing all correspondence ensures seamless communication and prevents you from missing important notifications and deadlines.
The materials provided in this US Toolbox are for general information purposes only and are not intended to constitute comprehensive or specific legal, accounting, tax, marketing, or other advice. These materials may not reflect recent developments in the law, may not be complete, and may not pertain to your specific situation and circumstances.TradeSherpa, Inc. assumes no responsibility for errors or omissions in the materials, or for any losses that may arise from reliance upon the information contained these materials. Because these materials are intended to provide only general advice, specific advice should be taken from qualified professionals when dealing with specific situations and circumstances.