When do you have to submit evidence of trademark use?
In an Intent-To-Use (ITU) trademark application, you have six months from the Notice of Allowance date to file a Statement of Use. If you have not yet used the mark in commerce on the goods or services identified in your application, you can request a 6-month extension of time to submit use evidence. Each extension request is for a 6-month period. You may request a maximum of five extensions for a total maximum of three years from the date of the Notice of Allowance. Let’s explore situations where you may need an extension for a Statement of Use.
What if the mark has been used on only some of the goods/services?
If the mark has been used on some, but not all, of the goods/services identified in the application, you have a few options. You can file a Statement of Use for those items in use and delete the non-used items from the application. This option makes sense if you anticipate that the mark will not be used on those other items in the near term (e.g., 6-36 months).
If you expect to use the mark on the non-used items in the short term, you can request a six month extension of time and postpone the Statement of Use altogether. That way, you can wait until comprehensive use of the mark has been made on all the goods/services before filing the Statement of Use.
Extension for Statement of Use when some goods are in use and others are not?
You may also file a Request to Divide out the non-used items from the pending application, and file a Statement of Use for the used items. This will result in a registration for the goods in use assuming your use evidence is acceptable. Meanwhile, a second application will be pending for your non-used goods/services that will allow you to file use extensions.
How many extension requests may be filed?
A maximum of five extension requests may be filed, giving the applicant a total of three years from the Notice of Allowance date to file an extension of time.
What is an insurance extension and when should it be filed?
If you believe there is sufficient use in commerce of your mark, but want additional time to just in case, you may file an insurance extension to buy more time. The purpose of an insurance extension is to give the applicant an additional six months to use the mark in commerce and to provide better of specimens of use in the unfortunate event that the original specimens are rejected.
If your Statement of Use is filed early in the six-month period, you may want to hold off on filing the insurance extension until you hear back from the USPTO. If you receive an Office Action rejecting your specimens, you may still have enough time during the original six month period to produce and submit substitute specimens. An insurance extension makes sense if you’re approaching the end of the 6-month deadline and you won’t know the result of your SOU filing until after the deadline has passed. If you end up in that situation without having filed an insurance extension, your only option would be to submit substitute specimens that were in use prior to the expiration of the six-month period.
The insurance extension may be filed concurrently with a statement of use, or after the submission of the SOU as long as there is time remaining in the existing six-month period for filing the SOU. See TMEP Section 1108.03. The insurance extension may be used only once, and cannot be used to extend the total time period beyond 36 months from the Notice of Allowance date.
Not sure if you need an extension for a Statement of Use?
Reach out to patent and trademark attorney Vic Lin by email or call (949) 223-9623 to see how we can help you file a proper Statement of Use and gain more time if necessary.
