For a federal trademark application filed on an intent-to-use basis under Section 1(b), the USPTO generally issues a Notice of Allowance after the mark has been published for opposition and no opposition or other proceeding prevents the application from moving forward. The Notice does not itself register the mark; it begins the post-allowance period for establishing qualifying use in commerce or requesting additional time. In other words, the mark has a green light to federal registration, so long as the applicant files proof of bona fide use in commerce, or an extension request if available.
A Notice of Allowance is the USPTO’s notice that an intent-to-use application has cleared the publication stage and may proceed toward registration once the applicant satisfies the use requirements. The key next step is usually a timely Statement of Use, supported by qualifying use in commerce and an acceptable specimen, or a timely extension request when use has not yet begun.
Time is of the Essence After the Office Trademark Notice of Allowance Issue Date
Issuance of a Trademark
Notice of Allowance starts the clock on those remaining steps and the applicant then has six months from the Notice of Allowance issue date to file a Statement of Use or, in the alternative, file request for extension of time to file a Statement of Use, which will afford the applicant an additional six months to file a Statement of Use. In the event that an applicant fails to timely submit one of those filings, the application will be abandoned, and a proper and bona fide Statement of Use must be filed within the statutory scheme to mature the application to registration. In other words, a Section 1(b) applicant may generally obtain up to five six-month extension periods after the initial six-month deadline, subject to the statutory requirements; the application cannot be extended indefinitely.
Formalities of Statement of Use and Extension Requests After Trademark Notice of Allowance Issues
Use in commerce is the touchstone legal requirement to acquire trademark rights in the United States, and without use, trademark rights will not vest and pending applications after a Notice of Allowance is issued will become abandoned.
A Statement of Use requires an applicant to submit specimens showing their mark’s use in commerce in connection with the goods or services that appear in their application, as well as provide a date of first use anywhere and a date of first use in commerce.
Acceptable Evidence of Use After Trademark Notice of Allowance Issues
If an applicant’s mark is used in connection with physical goods, acceptable specimens may include labels, tags, stickers, product packaging, instruction manuals, or images of the goods themselves with the mark affixed to the product. Note that, for physical goods, advertisements are generally considered insufficient specimens of use by the USPTO.
If an applicant’s mark is used in connection with services, acceptable specimens might include advertisements, brochures, flyers, or website printouts featuring the mark.
While the USPTO will generally be satisfied with one acceptable specimen for each class in the application, it’s important to keep in mind that an applicant must still use their mark in connection with all the applied-for goods/services listed in class, even though only one specimen is being submitted. The bona fide status of a Statement of Use is critical and if formalities are not met, a registered trademark may later be subject to cancellation due to an uncorroborated Statement of Use filing during its application process.
Consultation with an expert trademark attorney experienced in federal trademark application prosecution, and corroborating allegations of use in the United States Patent and Trademark Office and Trademark Trial and Appeal Board, will guide startups and other brand owners on matters such as calculating and calendaring deadlines, advising on when to file a Statement of Use and what evidence to provide in corroboration, advising on available extension requests within the statutory scheme, and how to protect the brand during the federal trademark application pending process.
Author: David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal in 2014. Office: Ph: 310-751-0181; david@latml.com.
Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2018. All rights reserved.
