According to the Trademark Manual of Examining Procedure, receiving a notice of allowance from the United States Patent and Trademark Office (USPTO) indicates that the trademark survived the opposition period after it was published in the Official Gazette and is allowed. This is an important step in the trademark application process. However, the trademark is not yet registered, and there are still steps following a notice of allowance that you must follow to secure your trademark and use it commercially. Many people turn to a knowledgeable intellectual property lawyer for help completing the steps following a notice of allowance to protect their intellectual property. You can schedule a confidential consultation with an intellectual property lawyer from War IP Law, PLLC at (202) 800-3754.
File a Statement of Use
You must either file your statement of use or request an extension period within six months from the mailing date on the notice of allowance, which is typically six to eight weeks from the date the application was published for opposition. If you fail to take one of these steps, you will lose your trademark and will need to revive the application within two months of the date of abandonment by filing a petition.
A statement of use is a sworn statement in which the trademark applicant swears under oath that their trademark is now being used in commerce. The statement of use must include the following information:
- A statement signed by the applicant that the mark is being used in commerce
- At least one specimen of use
- The appropriate fee
A specimen of use is a real-world example of how the applicant is actually using the trademark. For goods, a specimen of use is typically on the product itself in the form of:
- A label
- A tag
- A container
- Packaging
If the trademark is for services, acceptable uses of the trademark are usually on:
- Marketing materials
- Advertising materials
- Magazine advertisements
- Websites that feature the product
- Brochures
- Business cards
An examining attorney from the USPTO will review your statement of use to determine if it meets the minimum filing requirements.
You can file an extension request at the time you file your statement of use if there is still time within your six-month window.
File an Extension of Time
If you are not currently using your trademark in commerce, you can file for an extension of time. The USPTO indicates that extensions are provided in six-month increments, and you must request the first extension within six months of the date of issuance of your trademark.
Applicants will need to provide the following information to request the first extension of time:
- A written request for an extension of time to file the statement of use
- The required filing fee
- A verified statement that the applicant still has a bona fide intention to use the mark in commerce or a bona fide intention to exercise legitimate control over the use of mark in commerce in which they specify the relevant goods or services they plan to use the mark on
The applicant can continue to request extensions of time up to a total of three years from the date of the notice of allowance. They must submit the same information described above for the first request, but they must also show good cause.
FAQs About Steps Following a Notice of Allowance
You may have questions about the steps following a notice of allowance. Below, we address these questions and give you the answers you need to move forward:
How Long Do I Have to File a Statement of Use?
You have six months from the issuance of the notice of allowance to file a statement of use. Alternatively, you can file for a request for extension of time. If granted, this gives you six more months to file your statement of use. In any event, you must file the statement of use within three years of when the USPTO issued the notice of allowance.
What Happens If I Do Not File a Statement of Use or Extension of Time?
If you do not file the statement of use or request for extension of use within the time limit, the trademark application is considered abandoned. The applicant must file a petition to revive the application within 60 days of the date of abandonment to continue the application process. If you have questions about filing a statement of use or extension of time, consider contacting the experienced intellectual property attorneys at War IP Law, PLLC today.
What Happens After I Submit the Statement of Use?
An examining attorney will review the statement of use. The attorney can take any of the following actions: 1) Approve the statement of use; 2) Refuse the registration; 3) Request additional requirements be met. If the examining attorney refuses the registration or seeks additional requirements, they will issue the applicant a letter following the same process that occurred before the publication process. This is an important step in the patent application process. If issues are resolved and the statement of use is approved, the USPTO issues a registration within approximately eight weeks. The application will be considered abandoned if issues are not resolved. The examining attorney will issue a final refusal if all of the objections are not overcome within the applicable time period. The applicant can appeal this decision for an additional fee.
Can I Withdraw My Statement of Use?
Applicants cannot withdraw their statement of use. However, they can file one extension request at the time they file their statement of use in case there are any problems or deficiencies in their statement. This way, if there is an error in the statement of use or the specimen of use is not accepted, they will still have the opportunity to correct it without abandoning their application.
Contact an Experienced Intellectual Property Lawyer to for Help with the Steps Following a Notice of Allowance
Trademarks are an important piece of intellectual property that can help you protect the brand and image of your product or service. A notice of allowance is an important step forward that shows your application is nearing approval. However, you must carefully follow steps after receiving the notice of allowance to make the process official. An intellectual property lawyer from War IP Law, PLLC can help you with this final step in the process, as well as with reviving abandoned applications, registering your trademark, and responding to objections. Learn more by calling (202) 800-3754.
