When you file a trademark application on an Intent To Use basis, there is an additional step to the process. Before you get your trademark registration, you will need to show use of the mark in commerce in connection with all of the goods or services listed in your application. This is done by submitting the Statement of Use. But what if your mark is not in use when you receive a Notice of Allowance? You may need to file a Request for an Extension of Time.
Notice of Allowance Deadline
Once a Notice of Allowance for your application issues, the clock starts ticking on your application. You have six months to make a filing. Otherwise, your application will go abandoned. In order to avoid that happening, you will need to either file a Statement of Use or a Request for an Extension of Time.
What Is a Request for an Extension of Time?
The Request for an Extension of Time is exactly as the name implies: it is a request that the Trademark Office grant the applicant an additional 6-month period to start using the trademark in commerce. Although it is called a “request,” once filed it is typically granted without question. The Request for an Extension of Time says that you still intend to use the mark and, if granted, allows you additional time to develop your products and/or services and put the trademark into use in commerce.
It is very important to know whether you should file a Request for an Extension of Time or a Statement of Use, and you should consider speaking with an attorney if you aren’t sure which one you need to file. If you file a Statement of Use prematurely, your trademark registration can be subject to cancellation. This essentially makes the registration worthless, since it will not help you when you need it most. The Trademark Office may even accept the filing if it is made prematurely. If that happens, you are unlikely to even know your registration is subject to challenge until you actually have a legal issue. For an intent to use application, the Statement of Use is a crucial filing, and one that should not be made without first consulting with an attorney. When in doubt, you are better off to file to request an extension of time.
How Many Requests for an Extension of Time Can I File?
You can make up to five Requests for an Extension of Time, but you have to pay a filing fee (and legal fee, if you choose to work with an attorney) for each one. This means that you can give yourself an additional three years to start using your trademark in commerce. That three years is from the Notice of Allowance date, and does not include the time it took for the Notice of Allowance to issue after you filed your trademark application. That usually takes at least a year. So, as you can see, if you file on an Intent To Use basis, you have at least four years to begin using your mark in commerce.
I typically recommend filing for a trademark application if you believe you will be using the mark within one to two years. Beyond that, others may question whether you had a legitimate intent to use your trademark at the time you filed your application. Of course, this depends on your industry, too. It may take you four years to launch an airline service, while launching a clothing line can typically be done more quickly. For a business that is more capital- or technology-intensive, I would expect that at least a couple Requests for an Extension of Time would be necessary.
Are You Not Sure Whether You Need To File a Request for an Extension of Time Or a Statement of Use?
It is important to know whether you are ready to file a Statement of Use, or if a Request for an Extension of Time is needed. If you would discuss which filing you should make and get assistance with making it, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
