An insurance extension of time is a type of “insurance” for intent-to-use trademark applications when a Statement of Use (SOU) is filed with the United States Patent and Trademark Office. This type of extension is a common way to have an additional six months to cure any problems with the specimen of use filed and hopefully, avoid the expense and hassle of filing a new application. What is an insurance extension of time? Many intellectual property trademark filers use the extension to receive additional time to correct any specimen problems related to the Statement of Use. However, an insurance extension of time has a few rules the applicant must follow. If you have questions about an insurance extension of time, reach out to the experienced intellectual property attorneys at War IP Law, PLLC, by calling (202) 800-3754.
Who Needs an Insurance Extension of Time?
With an allowed intent-to-use (ITU) trademark application, the applicant has a deadline for submitting additional evidence or specimens for trademark usage. To complete this process, the applicant must submit a Statement of Use. All Statement of Use filings has an expiration date, usually within a six-month period. While most applicants file before the time limit, others submit close to the deadline, which may lead to challenges. In some situations, there is no guarantee that the United States Patent and Trademark Office (USPTO) will accept submitted evidence or specimens, leading to a rejected trademark application. The insurance extension request allows those ITU applicants more time to create and use new specimens, especially if the USPTO rejects the original ones in the initial application.
When an ITU application is filed, the applicant must show the use of the mark in commerce with the claimed goods and/or services before the registration is issued. The Statement of Use is a necessary part of the process, along with the proper specimens. Specific services or goods cannot remain an “idea” and receive trademark registration under the law. For that reason, the trademark owner must submit an example of how these services or products are used with the specific mark. Those pieces of evidence are called trademark specimens of use, with the USPTO setting clear, definitive rules about them. The initial Intent-To-Use application does not require specimens. However, with the Notice of Allowance issuance, the applicant must file a Statement of Use and submit of these specimens. The time to file and correct deficiencies in an application is limited. War IP Law, PLLC, may be able to help answer these pressing questions about the Statement of Use and insurance extensions.
Application Deficiencies and Insurance Extension of Time
When the examining USPTO attorney reviews the specimen and issues an Office Action, there may be a few issues. While there is an up to the six-month deadline to respond to that action, the response must include the substituted specimens that were “in use” before the expiration of the Statement of Use deadline. All applicants must have created and used new specimens within that period. After the expiration of the deadline, no new unique specimens may be used in commerce and used to register the trademark. There may be problems with these situations. For example, an applicant might not receive a rejection or know about deficiencies in the application until after the deadline has expired. As a result, the applicant will not have enough time to create and use new specimens.
What is an insurance extension of time, and how does it work in these cases? An insurance extension of time buys the applicant more time to create and use new specimens. The United States Patent and Trademark Office must see evidence that the specimen has been created and used in commerce before a registration is issued. If the original submission deadline is approaching and the applicant has no other specimens, the insurance extension of time may be able to help. This extension allows the individual to create and use new specimens for an additional six months of time.
According to the United States Patent and Trademark Office, applicants can file only one insurance extension request with the application. An application may file an extension if there is time remaining in the initial six-month period for the Statement of Use. The request would not extend the time to more than 36 months beyond the Notice of Allowance.
Is an Insurance Extension the Best Option?
In some cases, the ITU applicant should consider filing an insurance extension. If the specimen runs the risk of rejection by the examining attorney, then filing an insurance request is an option. When there are too few specimens or no backup specimens filed with the statement of use, an insurance request could help. Remember that specimens must be in use prior to the deadline. If these specimens were not in use and the six-month deadline was approaching, the insurance regulations may be beneficial.
In many cases, the applicant will not know whether the specimens have been accepted or not until after the deadline has expired. In these cases, the insurance extension of time should be requested. There may be alternative ways to ensure that your specimen is reviewed prior to the expiration of the deadline. The applicant can file the Statement of Use early in the process, allowing more time to fix any deficiencies. During that time, the applicant can review the disapproval reasons for the original specimens, create and use the new ones, and submit the substitute specimens to the USPTO, so long as the new specimen is used during the appropriate time.
Consequences of Not Filing an Insurance Extension
Unfortunately, the United States Patent and Trademark Office may have the trademark application deemed abandoned under certain circumstances. These circumstances include:
- Rejection of original specimens
- Substitute specimens were not in use before the deadline
- There was not enough time to create and use new specimens
For that reason, it is essential to request an insurance extension when the six-month deadline if there is any question as to whether or not your specimen is acceptable. The insurance extension of time may help the applicant to submit more evidence and specimens to keep the application active. Without it, the applicant may have to restart the trademark process, enduring additional filing fees and other costs.
Talk To an Intellectual Law Attorney To Learn More
What is an insurance extension of time? These extensions can help applicants correct deficiencies in their application, mainly by creating and using new specimens. Without it, the deadline can pass, resulting in a rejected application. If you have questions about the insurance extension of time and Statement of Use, talk to the intellectual law attorneys at War IP Law, PLLC. Schedule your consultation by calling (202) 800-3754.
