Statement of Use Extensions: Obtaining More Time for Your Trademark Applications
An important, but sometimes overlooked aspect of the trademark registration process is the timeline for filing a Statement of Use. This blog post explains the process set forth in Section 1108 of the Trademark Manual of Examining Procedure (TMEP). Section 1108 addresses Requests for Extensions of Time to File the Statement of Use.
The Basics: What is a Statement of Use and When is it Due?
When a party files a trademark application based on intent to use (ITU), the party signals to the USPTO that it plans to use the trademark in commerce in the future but it has not done so yet. When such an application is approved by a trademark examining attorney, it receives a Notice of Allowance. The Notice of Allowance triggers a six-month deadline to pay a fee, submit proof that the applicant is using the mark along with a date of first use. The applicant can either:
File a Statement of Use (if the applicant started using the mark in commerce), or
Request an extension of time to file the Statement of Use.
Be aware that this blog post oversimplifies the analysis described above.
Understanding the Extension Process
If you are not ready to file your Statement of Use when the six-month deadline approaches, do not panic. The USPTO will sell you six-month extensions (currently $125 per class, per application).
You can request up to five extensions: Each extension gives you an additional six months.
The first extension does not require “good cause”: You do not need to show good cause for the first extension request.
Subsequent extensions require "good cause": For the 2nd through 5th extensions, the USPTO rules require you to explain why you need more time. See TMEP §1108.02(f).
There's a hard limit: You cannot extend beyond 36 months (3 years) from the date of your Notice of Allowance.
How to File an Extension Request
The USPTO recommends filing your extension request electronically through the Trademark Electronic Application System (TEAS). Over the last several years, the USPTO has eliminated the number of filings eligible for paper filing. Plan on filing electronically.
Tips for Extension Requests
Don't wait until the last minute: File your extension request well before the deadline to avoid potential issues with electronic systems or mail delays.
Keep track of your deadlines: Mark your calendar with both the six-month deadline and a reminder a few weeks earlier.
Be prepared to show "good cause": For extensions beyond the first, have a clear explanation ready for why you need more time.
Consider your long-term strategy: While extensions are available, aim to use your mark in commerce as soon as possible to strengthen your trademark rights.
Common Mistakes to Avoid When Requesting Extensions
Missing the deadline: This is a critical mistake. If you miss the deadline to file an extension or Statement of Use, your application will be abandoned.
Requesting an Untimely Extension After Submitting a Statement of Use: Generally speaking, applicants cannot convert the basis of an application from intent-to-use to use back to intent-to-use. “Insurance Extensions” (discussed here) provide a mechanism for applicants to file a statement of use with comfort that the applicant can file corrected materials if the SOU is not accepted. If you are interested in requesting an Insurance Extension, make sure that you follow the steps provided in TMEP §1108.03. It might be too late if you wait until your SOU is rejected by the USPTO.
Insufficient fees: Ensure you pay the correct fee for each class in your application. Underpayment can lead to denial of your extension request.
Incorrect or incomplete forms: Double-check all information on your extension request. Errors or omissions can cause delays or denials.
Assuming automatic approval: Do not assume your extension will be automatically granted. Wait for confirmation from the USPTO.
Forgetting to file a Statement of Use: Remember, extensions are temporary. You must file your Statement of Use before your final extension expires.
Conclusion
Understanding the extension process for filing a Statement of Use is important for intent-to-use trademark applicants. While the USPTO provides flexibility with these extensions, it is important to stay on top of your deadlines and work towards using your mark in commerce.
Remember, each situation is unique, and trademark law can be complex. If you are unsure about your specific situation or need assistance with your trademark application, do not hesitate to contact an experienced trademark attorney. If you would like to discuss your trademark application or an extension with an experienced trademark attorney, schedule a consultation here.
