Have you received a Notice of Allowance letter from the Trademark Office? If so, that means that you filed your application on an intent to use basis. You are now in the home stretch of the trademark application process! The issuance of the Notice of Allowance means that your application has been approved. It also has been through publication, and either was not opposed, or at least was not opposed successfully. This post explains what the Notice of Allowance is, and what you need to do after receiving it.
Notice of Allowance Issuance
The main difference between trademark applications filed on an in use vs. an intent to use basis is the Notice of Allowance. For intent to use applications, you get this letter at the end of the process, but before you get your registration. It simply means that it is time for you to show use of your trademark. Once you provide an acceptable specimen, you will then get your registration. This does not happen for in use applications. For those you already showed use at the time you filed your application.
When/How to Respond
The Notice of Allowance letter starts a countdown. You have six months from the date the letter is issued to make one of two filings: (1) the Statement of Use, or (2) a Request for an Extension of Time. Ultimately, you will need to file a Statement of Use to get your registration. However, you should not file it before you have provided all of the products and/or services in your application under your trademark. Otherwise, your registration will be subject to cancellation.
If you have multiple products/services in your application, but are only using your trademark with some of them, you can still file the Statement of Use. But you must delete any unused products/services from your application. If you are not ready to make the filing six months from the date of the Notice of Allowance, then you should request an extension. You can request up to five extensions. That will keep your application going for years after you get the Notice of Allowance.
Do You Need Help Finishing the Application Process?
If you’re not sure whether you’re ready to file the Statement of Use, or just want to make sure that your application is completed properly, I would be happy to assist you. The Notice of Allowance phase of the application process is very important, and mistakes can mean that the registration you get can be challenged by others. If you would like to discuss your application, please 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.
