When you file a trademark application on an intent to use basis, there is an additional step to the process versus filing on an in use basis. Before you get your trademark registration, you will need to show that you are using the trademark in commerce. That means you must tell the Trademark Office you are using the trademark in connection with the goods or services listed in your application. To do so, you submit an additional filing called the statement of use. However, if you cannot meet the filing deadline for the statement of use, you may need to request an extension of time.
Notice of Allowance Deadline
In order to file a statement of use, you generally want to wait until the Trademark Office issues a notice of allowance letter. You would receive this letter after the Trademark Office has given initial approval and published your application. Assuming there are no issues with the application and no one opposes your application, the notice of allowance will issue.
Once the notice of allowance for your application issues, the clock starts ticking on your application. You will 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 the 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 usually 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 to use your trademark in commerce.
It is extremely important that you do not file the statement of use prematurely. Doing so can put your application at risk or even make your registration subject to cancellation. You should consider speaking with an attorney if you aren’t sure whether to file a statement of use or a request for an extension of time. When in doubt, you are better off filing to request an extension of time.
How Many Requests for an Extension of Time Can I File?
You can file up to five requests for an extension of time. Of course, you have to pay a filing fee for each one. Filing all your extensions would allow you up to three years to start using your trademark in commerce. Since it takes over a year for most applications to be reviewed and published, you generally have at least four years from when you file your application to begin using your mark in commerce if you file on an intent to use basis.
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, while introducing a clothing line may only take a few months. 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 is appropriate 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.
