A Notice of Allowance is an important step in a federal trademark application filed on an intent-to-use basis, but it is not a registration. It means the application has passed examination and publication without an opposition that prevents allowance. Before the mark can register, the applicant generally must show qualifying use in commerce and file an acceptable Statement of Use.
The Notice of Allowance starts a six-month filing period. Before that period expires, the applicant must generally file either a Statement of Use or a request for a six-month extension. The correct filing depends on what the applicant is actually doing in the marketplace, not simply whether a logo, website, or product concept exists.
When is a Statement of Use appropriate?
A Statement of Use is appropriate when the mark is actually being used in commerce for the goods or services being claimed. The filing includes dates of use, a verified statement, the required fee, and at least one specimen for each class.
The evidence must match the type of offering. For goods, acceptable evidence may include the mark on the goods, packaging, labels, or an online point-of-sale display that directly associates the mark with goods that can be purchased. For services, advertisements or webpages may qualify when they show the mark used in connection with services that are actually being rendered.
A mock-up, draft webpage, printer’s proof, or digitally altered image does not establish actual marketplace use. A webpage specimen must also identify its URL and the date it was accessed or printed.
What if only some goods or services are in use?
An applicant should not claim use for goods or services that have not entered qualifying commerce. Depending on the application and business plan, options may include deleting unused items, dividing part of the application, or requesting more time. Each option can affect the scope, cost, and timing of the application, so the full identification should be reviewed before filing.
When should an extension request be considered?
If qualifying use has not begun, an applicant may request a six-month extension and confirm a continued bona fide intention to use the mark. The first request is due within six months after the Notice of Allowance. Up to four additional six-month requests may be available, with later requests requiring a statement of ongoing efforts to use the mark.
The USPTO states that the maximum period for filing a Statement of Use, if all five extensions are obtained, is 36 months from the Notice of Allowance date. Extension requests and Statements of Use carry per-class filing fees, which should be checked when the filing is prepared because fees can change.
What should the applicant review before filing?
Before choosing a filing, confirm:
• the exact Notice of Allowance issue date and deadline;
• the current owner of the application;
• the goods and services that are actually in use;
• the first-use dates that can be truthfully verified;
• whether the proposed specimen shows real marketplace use and matches the applied-for mark;
• the URL and access date for any webpage specimen; and
• whether unused items should be deleted, divided, or covered by an extension strategy.
Submitting a weak or premature Statement of Use can create avoidable problems. Missing the deadline can cause abandonment. The evidence and deadlines should therefore be reviewed before the filing is signed.
Discuss an intent-to-use trademark application
Sanchelima & Associates helps businesses evaluate trademark filing strategy, specimens, Statements of Use, extension requests, and related USPTO requirements. To request a consultation, identify the application serial number, Notice of Allowance date, goods or services currently in use, and the next deadline.
This article provides general information and is not legal advice. Filing requirements depend on the application record and current law.
Sources: USPTO Intent-to-Use Applications; USPTO Specimens; USPTO Statement of Use Minimum Filing Requirements; 15 U.S.C. § 1051.