Understanding the Trademark Notice of Allowance: Common Questions Answered

What is a Notice of Allowance, and what does it mean for my trademark application?

A Notice of Allowance is a document issued by the USPTO that indicates that a trademark application has survived the thirty-day opposition period following publication in the Official Gazette. A Notice of Allowance confirms that an applied-for trademark was not challenged by any third parties during the publication phase and is preliminarily cleared for registration. It is an important milestone in the trademark registration process. After a trademark application is filed with the USPTO, an examining attorney reviews the application to determine whether it complies with minimum legal requirements for registration. If the examining attorney finds that the application meets the legal requirements, the USPTO will issue a Notice of Allowance. Receiving a Notice of Allowance means that your trademark application has been approved for registration, but only once you satisfy the use-in-commerce requirements. You must file a Statement of Use or Request for Extension of Time to file a Statement of Use within six months of the issuance of the Notice of Allowance. The Statement of Use is a declaration that the trademark is being used in commerce in connection with the goods or services listed in the application. Failure to file a Statement of Use or Request for Extension of Time within the six-month period, may result in abandonment of your application and forfeiture of the priority rights that vested upon its initial filing. In summary, a Notice of Allowance means that your trademark application has been cleared for registration but you still need to file a Statement of Use in order to satisfy all requirements and complete the registration process.

How long do I have to file a Statement of Use, and what happens if I miss the deadline?

Once a Notice of Allowance has been issued, you have six months to file a Statement of Use or a Request for Extension of Time to file a Statement of Use. If you do not file either of these documents within the six-month period, your trademark application will be considered abandoned, and you will lose your filing fee and the opportunity to register your trademark. However, if you are unable to file a Statement of Use within the initial six-month period, you can request up to five extensions of six months each to file the Statement of Use. To request an extension, you must file a Request for Extension of Time to File a Statement of Use with the USPTO and pay the required fee. You can only file a request for an extension of time if you have already filed a Request for Extension of Time to File a Statement of Use or a Statement of Use during the initial six-month period. It’s essential to meet the filing requirements to avoid losing your filing fee and trademark registration opportunity. If you have any doubts about the Statement of Use or the filing process, it may be helpful to consult with an attorney experienced in trademark law.

What should I include in my Statement of Use?

Your Statement of Use should provide evidence or ‘specimens’ showing that your trademark is being used in commerce in connection with the goods or services listed in your trademark application.  Acceptable specimens of use for goods might include labels, tags, or containers for the goods, a display associated with the goods, or other types of commercial packaging. Webpages are generally also acceptable when they include a picture or textual description of the goods associated with the mark and the means to order the goods. Acceptable specimens for services might include screenshots of sign-in screens, title or launch pages, or other webpages showing a direct association between the mark and the applied-for services. Marketing or promotional materials showing the mark used or prominently displayed in the advertising of the services may also be acceptable. When preparing your Statement of Use, you should include the following: Specimens: Provide evidence of how the trademark is being used in the marketplace, such as product labels, packaging, marketing materials, or a website displaying the trademark and the goods or services. One specimen must be provided for each class of goods or services identified in the application.   Dates of first use: Specify the date(s) on which you first used the trademark in commerce for each class of goods or services listed in the application. Signed declaration: Include a properly-signed declaration that you are the owner of the applied-for trademark and that the trademark is in being used in commerce in connection with the applied-for goods and/or services. Providing sufficient evidence of your trademark use is an essential requirement for obtaining federal registration. The USPTO may reject your Statement of Use if it does not adequately demonstrate that your trademark is in use in commerce. If you have any doubts about the content of your Statement of Use, it may be helpful to consult with an attorney experienced in trademark law.

Can I request an extension of time to file my Statement of Use?

Yes, if you are unable to file your Statement of Use within the initial six-month period after the Notice of Allowance has been issued, you can request an extension of time to file. You can request up to five extensions of six months each, which means you can have up to an additional 36 months (6 + 5 x 6) from the date of the Notice of Allowance to file your Statement of Use. To request an extension of time to file your Statement of Use, you must file a Request for Extension of Time to File a Statement of Use with the USPTO and pay the required fee. You can file the request for an extension of time before the end of the initial six-month period or any subsequent extensions. It’s important to note that a Request for Extension of Time to File a Statement of Use does not automatically grant you an extension of time. The USPTO must approve your request for an extension of time. If the USPTO approves your request, you will then have an additional six (6) months to file a Statement of Use or, in most cases, request another extension of time.  The total time available for filing a Statement of Use may not be extended beyond thirty-six months from the issue date of the Notice of Allowance. If a Statement of Use is not filed by the end of thirty-six months, the application will be abandoned and cannot be revived.  It’s generally recommended to file your Statement of Use as soon as possible to avoid additional fees and potential loss of trademark rights. However, if you need more time to start using your trademark in commerce or encounter unforeseen delays, filing for an extension of time may be an advisable option.

What happens if my Statement of Use is refused or rejected?

If your Statement of Use is refused or rejected, it means that the USPTO has determined that your trademark application cannot proceed. The reasons for refusal or rejection can vary, but some common reasons include: Non-use: The USPTO may determine that you have not provided sufficient evidence that your trademark is being used in commerce in connection with the goods or services listed in your trademark application. Inconsistencies: The USPTO may find inconsistencies in the information provided in your Statement of Use, such as incorrect dates of use or goods or services that do not match the original application. Likelihood of confusion: The USPTO may determine that your trademark is likely to cause confusion with an existing registered mark or that it is too similar to an existing registered mark. If the USPTO determines that your Statement of Use is not acceptable, you will receive a written Office Action from the USPTO explaining the reasons for refusal or rejection. You will then have the opportunity to respond to the Office Action and address the USPTO’s concerns. If you are unable to overcome the refusal or rejection, you may appeal the decision to the Trademark Trial and Appeal Board (TTAB) or file a new trademark application. It’s important to note that, if your trademark application is ultimately refused or rejected, you may lose your filing fee and the opportunity to register your trademark. If the USPTO does not accept your Statement of Use, it may be helpful to consult with an attorney experienced in trademark law to help you navigate the appeals process and increase your chances of success.

How long does it take for my trademark registration to be issued after I file my Statement of Use?

The amount of time it takes for your trademark registration to be issued after you file your Statement of Use depends on several factors, including the backlog of applications at the USPTO, the complexity of your application, and whether any issues or objections are raised during the examination process. Generally, the USPTO takes several months to review and process your Statement of Use. If your Statement of Use is approved, your trademark registration will be issued, and you will receive a Certificate of Registration. If there are issues or objections raised during the examination process, it may take longer to resolve them. You will need to respond to any Office Actions or Notices of Suspension promptly and provide the USPTO with any additional information or evidence they request. The USPTO’s current processing times for trademark applications can be found on their website. As of September 2021, the USPTO estimated the total time from filing to registration to be around 10-12 months for applications that do not encounter issues or objections during the examination process. However, processing times can vary, and it’s essential to be patient throughout the registration process. If you have any questions about the status of your application, you can check the USPTO’s online database or contact the trademark examining attorney assigned to your application.

Experienced Trademark Attorney for USPTO Notices of Allowance

Entrepreneurs, startups, and technology companies who are navigating the trademark application and registration process through the USPTO are well advised to consult with an experienced trademark attorney in Los Angeles, California to discuss federal trademark protection strategies. An experienced trademark lawyer in Los Angeles, Beverly Hills, Santa Monica, Hollywood, or other California city will be able to consult entrepreneurs, technology startups, and small businesses on nationwide brand protection issues and trademark registration strategy.