TRADEMARK LEARNING CENTER - by TRADEMARKS ON CALL®

Provided by Trademarks On Call®, the Trademark Learning Center is for informational purposes only, not legal advice. Select a topic below to learn more about trademarks:

Trademarks | Office Actions | Notice of Allowance | Statement of Use

Trademark Renewals | Abandoned Applications | Cancelled Trademarks

NOTICE OF ALLOWANCE

If you have received a Notice of Allowance issued by the U.S. Patent and Trademark Office (USPTO), you have six (6) months to either 1) Use your trademark in commerce and submit a Statement of Use, or 2) Request a six (6) month extension of time to file a Statement of Use. If you fail to file a Statement of Use or a Request for Extension by the deadline, the USPTO will abandon your trademark application.

WHAT IS A NOTICE OF ALLOWANCE?

A Notice of Allowance is one part of the trademark application process conducted by the USPTO. Some trademark applications are filed on an in-use basis, which means that the trademark is being used in commerce at the time the application is filed - the applicant is actually using the trademark to sell and/or promote its goods or services. However, other trademark applications are filed on an intent-to-use basis, which means that the trademark is not being used in commerce at the time the application is filed, but the applicant has an intent to use the trademark in the future. In this case, before a trademark can be registered before the USPTO, the applicant is required to submit proof that it has begun to use the trademark in commerce.

STATEMENT OF USE

About 3-4 months after an intent-to-use trademark application is filed, the USPTO will begin examination of the application. If the USPTO finds no problems with the application (or all problems are resolved by the applicant), and no third-party opposes the application during the publication period, the USPTO will issue a Notice of Allowance. The Notice of Allowance informs the applicant that it must file a Statement of Use within six (6) months, thereby proving that the mark is being used in commerce. The Statement of Use must include a real-life example of how the trademark is being used in commerce and the earliest dates the trademark was first used in commerce (all examples of commercial use must be real-life examples - mock-ups, digital or otherwise, are not accepted). If the applicant is unable to file a Statement of Use before the six (6) month deadline, the applicant may avoid abandonment of the application by filing a request for a six (6) month extension of time to file the Statement of Use.

Note that in an intent-to-use trademark application, the applicant need not wait for a Notice of Allowance to submit proof of use. Proof of use can be submitted earlier in the process, provided the trademark is being used commercially. This is done by filing what is called an Amendment to Allege Use. An Amendment to Allege Use is similar to a Statement of Use but it is filed earlier in the process, before the publication period for a trademark application begins. Typically, an Amendment to Allege Use is not filed simply because the trademark is not yet being used in commerce. However, there can also be strategic reasons to file a Statement of Use rather than an Amendment to Allege Use. For information on such strategic matters, you may want to consult with a licensed trademark attorney.

EXTENSION OF TIME

A Notice of Allowance provides a six (6) month deadline for filing a Statement of Use. However, if the applicant is unable to file a Statement of Use before the six (6) month deadline, the applicant may file a request for a six (6) month extension of time to file the Statement of Use. The USPTO allows an applicant to file up to five (5) extension requests, where each filing extends the deadline by another six (6) months.

DEADLINES

Once a Notice of Allowance has been issued, the applicant has six (6) months to file a Statement of Use. If the applicant is unable to file a Statement of Use before the deadline, the applicant may file a request for a 6-month extension of time to file the Statement of Use. An applicant may file up to 5 extensions of time, where each extension extends the deadline by 6 months. However, if the applicant does not file a Statement of Use or a Request for Extension by each 6-month deadline, the USPTO will abandon your trademark application. However, keeping track of each upcoming deadline can be complicated. For assistance in determining these deadlines, you may want to consult with a licensed trademark attorney.

Disclaimer: Trademarks On Call is not a law firm or a substitute for an attorney or a law firm. Trademarks On Call does not provide legal advice. The information provided on this website is for informational purposes only and does not constitute legal advice.