Trademark Protection Best Practices For Tech Startups
What is a SOU and What Now!?
Standard USPTO explanation when a Statement Of Use is issued:
Intent to Use (ITU) Applicants of Federal Trademark Applications are required to file a Statement of Use before the application matures to registration. In other words, applicants must show bona fide use of the mark in commercial trade before trademark rights vest in the United States Patent and Trademark Office.
A Statement of Use must be verified and the facts recited in the application must be accurate, accompanied by a specimen showing use of the mark in commerce, or, “in the ordinary course of trade”. (Section 45 of the Trademark Act, 15 U.S.C. §1127). If the applicant is using the mark in commerce on all of the goods or services listed in the Notice of Allowance (NOA), the applicant must submit an SOU and the required fee(s) within 6 months from the date the Notice of Allowance issued to avoid abandonment.
If there are no deficiencies in the Statement of Use, the USPTO issues a registration within approximately 2 month. However, if the SOU is rejected or the mark is not in use in commerce before the expiration of applicable time limits an Extension Request must be filed to avoid abandonment of the application.
The consideration to whether file an SOU or an applicable Extension Request requires analysis of the stage of development, production, sales and other marketing activity under the trademark, and in relation to the goods and services described in the Application. A sham SOU, whether filed to protect a brand in apparel line, a new food item, or a technology startup, even if accepted by the USPTO, can have devastating consequences on the validity of subsequent trademark registrations.
Trademark applicants are advised to consult intellectual property and trademark legal experts on whether to file a Statement of Use, and what specimens and declarations should be included.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; david@latml.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2015. All rights reserved.
This post does not imply any affiliation with or endorsement by the USPTO. Please visit USPTO home page for more information.
