If a trademark applicant files an application based on intent to use in commerce, and a Notice of Allowance is issued, the applicant will need to file a Statement of Use in order for the trademark to mature to a registration. A Statement of Use is a verified statement that the trademark is in use in commerce with the goods and/or services identified in the application. The Statement of Use must include the dates of first use of the mark anywhere and first use in commerce. See our webpage entitled, For The Purposes Of Trademark Law What Is First Use In Commerce, for more information on this topic. The meaning of "use in commerce" will vary based on different industries' practices. It is critical to know what is ordinary use in commerce for a particular industry. It is possible that a third party will attempt to invalidate a trademark application by alleging the applicant did not make proper use of the trademark in commerce. An applicant should be prepared with documentation to support its use of the mark in commerce.
If an applicant is not prepared to file a Statement of Use, a Request for an Extension of Time can be filed with the United States Patent & Trademark Office ("USPTO"). An applicant is permitted five Requests For Extensions to File A Statement Of Use. Each extension will allow the applicant a six-month period to continue efforts to bring the goods and/or services to the marketplace. Once the Notice of Allowance is issued, the applicant could be granted a total of three years (as long as the applicant continues to file Requests for Extensions of Time, files the mandatory filing fees, and continues maintaining a bona fide intent to use the mark in commerce, along with taking concrete steps towards using the mark in commerce for the goods and services identified in the trademark application.) to demonstrate use in commerce.
The first request for an extension of time to file a Statement of Use must include, a written request within six months from the date of issuance of the Notice of Allowance, the mandatory USPTO filing fee (currently $125.00 per international class), a verified statement signed by the applicant or a person authorized to sign on the applicant's behalf stating there is a continued bona fide intention to use the mark in commerce. A second or subsequent extension must also be submitted within a six-month deadline, and must include the same particulars that the first extension requires, except it must also include a showing of good cause. This statement of good cause shall detail the applicant's ongoing efforts to make use of the mark in commerce. These efforts may include, service or product research, manufacturing activities, development or market research, promotional activities, steps to acquire distributors, steps to obtain governmental approval or other similar activities.
If the Request for an Extension of Time does not include a showing of good cause, or if the showing is deemed inadequate, the USPTO will issue an Office Action denying the Extension Request, but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause. This showing in response to the Office Action can be submitted to the USPTO even if the statutory period for filing the statement of use has expired. See Trademark Manual of Examining Procedure ("TMEP") Section 1108.02(h).
The applicant also has the option to file a Request for an Extension to File the Statement of Use along with filing the Statement of Use, if time remains in the statutory period. This is often viewed as an insurance policy or a conservative measure to secure additional time. This double filing may be conducted, if the applicant questions the acceptance of the specimen or to potentially correct any deficiency in the Statement of Use as long as time remains in the statutory period. The filing fees will not be refunded so this is a business decision an applicant makes based on how confident he or she is regarding acceptance of the Statement of Use. If you have any questions regarding Intent to Use applications, Statements of Use, or Extension Requests, please do not hesitate to contact us for a courtesy trademark consultation.