File Statement of Use (SOU) or Extension for Trademark

$100.00

SKU: FS-TM-SOU Category: Tags: , , ,

Description

L4SB’s licensed and experienced trademark attorneys will file your Statement of Use (SOU) or Extension for your Trademark (Section 1(b) Filings).

What’s Included:

  • Case handled by a trademark attorney.
  • Reviewing file and answering your questions.
  • Assistance with the proper specimens for Statement of Use (SOU) filings.
  • Proper filing with the US Patent & Trademark Office

What’s not Included:

  • This service is provided for only one (1) Sect 1(b) trademark SOU or extension, no additional filings or assistance is provided.
  • This service covers up to the submission of the SOU or extension, it does not cover any work that may be needed after the SOU or extension is submitted, including but not limited to responses to Office Actions (i.e. the USPTO rejects your specimens for a SOU).
  • If your trademark already has an “Attorney of Record” (or AOR), the USPTO will refuse our submissions related to your trademark, without submitting a “Correspondence and Attorney/Domestic Representative Forms” (or CAR Form).  This can be easy or hard, depending on a few factors outside our control, including whether your previous attorney is responsive.  This can impact our ability to meet deadlines, and unless you pay the Option for us to handle the CAR Form, this will be your responsibility.  We are not responsible for any missed deadlines associated with the AOR or CAR Form.
  • Rush service is NOT included, unless you select it.  If you have a deadline within a week of your order, you must pay for the rush service.

These questions are only relevant when the USPTO issues you a trademark filing on a “1(b) basis”, for an “Intent-to-Use” (or ITU) trademark.  This is opposed to a “1(a) basis” filing, which  requires you to be using your mark and showing adequate specimens to prove “Use in Commerce” (See another FAQ for more information about this).

When the USPTO awards you an Intent-to-Use (or ITU) trademark, the USPTO will issue you a “Notice of Allowance Date” (or NOA).   This NOA Date is critical.

You have up to 6-months from the NOA Date to file a SOU.  A SOU requires you to prove “Use in Commerce” with specimens.  If you’re not ready for this, you can submit an Extension for another 6-months.  After the Extension is exhausted, you must file a SOU or another Extension.

You can file a total of five (5) Extensions, effectively giving you up to 3 years after your NOA Date, to start using your trademark.

The answer to this question, depends on the timing.

(1) Did you receive a “Notice of Abandonment” from the USPTO?  You can find out by going to https://tsdr.uspto.gov/ and typing in your trademark’s Serial Number, and looking at the “Documents” tab.

–>  No, you didn’t receive a Notice of Abandonment”?  Excellent, you can revive your trademark by submitting a “Petition to Revive”.

–>  Yes, you received a Notice of Abandonment.

(2) Are we within 2-months of receiving the Notice of Abandonment?

–>  Yes?  You can file a “Petition to Revive”.

–>  No, the Notice of Abandonment was received more than 2-months ago?  I’m sorry, but you’re out of luck.  You will need to refile your trademark application again, if you want trademark protection for your trademark.

A Statement of Use (or SOU) requires you to tell the USPTO (1) when you’ve started using your trademark in commerce in the US, and (2) show evidence (called specimens) of actual use in commerce in the US.

This is a LOT harder than most people think, and can be a major stumbling block to approval.  BECAUSE OF THIS, WE STRONGLY ENCOURAGE PEOPLE TO FILE BOTH A SOU AND EXTENSION, IF YOU ARE WITHIN 2 MONTHS OF THE DEADLINE.

Don’t believe it?  You can look over the rules yourself here:  https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-900d1e489.html.

In a nutshell, a specimen must show three things:  (1) mark prominently featured, (2) in association with the relevant products and/or services identified in your trademark application, AND (3) being used in commerce.

This means, if your selling a brand of t-shirts, it doesn’t matter if the trademark is on the front of the shirt.  It needs to be on the packaging, on the tag, on the label.  It’s not listed on Amazon as a “T-Shirt”, it’s listed as “My Trademark T-Shirt”, like “Fruit of the Loom T-Shirt”.

If you’re selling services, this can be tricky.  If you’re located outside the US, this can be tricky as well.  Selling online is fine, but you need a “call to action” or “click here to buy” button.  A picture of your product, by itself, won’t cut it.

One of the advantages of hiring an actual trademark attorney (like we have at L4SB), is that we help clients navigate fraud and problems with the USPTO.  The USPTO, however, seems to have a lot of problems associated with fraud for clients who are not represented by an attorney.

This includes, apparently, people pretending to be attorneys.

Therefore, in 2025, the USPTO implemented more strict requirements for sending in forms related to existing trademarks that have a current “Attorney of Record” (or AOR) identified.  Specifically, the USPTO will ignore incoming forms and correspondence, unless it comes directly from either the owner or the existing AOR.  As trademark attorneys, the USPTO will ignore us, unless we are designated the AOR for an existing trademark.

If your trademark does not have an AOR, then this is not a problem.  We’ll become the AOR, and work with you as appropriate.

If, however, your trademark DOES HAVE an existing AOR, we will need you to tell the USPTO to revoke your existing AOR and substitute us as your AOR.  You do this by submitting a CAR Form to the USPTO.  We cannot do this ourselves, without your authorization.  Getting authorization is a pain.  We send in the form.  You then need to approve it and submit it back.  Once that’s done, we need to review it, and then submit it to your old AOR.  Your AOR must then approve it, send it back to us.  Then, we need to submit it to the USPTO.

If anything doesn’t work in this process — like your old attorney is dead or doesn’t otherwise respond — it can really hold things up.  This is why we cannot be responsible for AOR/CAR related delays or impacts to deadlines.  We also have a small fee to deal with this.