A Notice of Allowance looks like good news, and it is. The USPTO examined your trademark application, published it for opposition, nobody objected, and the office is prepared to register your mark.
However, the mark has not yet been registered and you must file the Statement of Use by the strict Notice of Allowance deadline.
Why you got one
If you filed the trademark application on an intent to use base rather than actual use, you were allowed to claim it before you had sold anything. That is how most businesses secure a name while they are still building.
But the USPTO will not register a mark not being used. So instead of registering it, the office issues a Notice of Allowance and asks you to come back and prove that use has begun.
A Notice of Allowance only applies to these types of applications and it is important to get it filed timely.
The six-month clock
The date printed on the Notice of Allowance starts a six-month window that is listed on the notice.
The Notice of Allowance issues.
The date printed on the notice is the date the clock starts. Not the date you opened it.
File a Statement of Use, or file an extension request.
A Statement of Use if you have begun using the mark in commerce. An extension request if you have not. If the window closes with neither on file, the application becomes abandoned and your filing date goes with it.
Six months each, each with its own USPTO fee, per class.
From the second extension onward you have to show good cause.
The door closes.
There is no sixth extension and no discretion to grant one.
The clock runs from the issue date of the notice, not from when you get round to reading it.
Extensions, and their limit
Extensions come in six-month increments. You can file up to five of them, which caps the total at 36 months from the issue date of the Notice of Allowance.
Each extension carries its own USPTO fee, per class. And from the second extension onward you have to show good cause, such as a description of what you have actually been doing to get the mark into use. Product development, manufacturing, regulatory approval, and marketing preparation all count. “We have not got round to it” does not.
At 36 months the door closes. There is no sixth extension and no discretion to grant one.
What a Statement of Use has to contain
Three things, and each is a place applications fail.
The dates of first use
Two of them, and they have to be right.
A specimen
Evidence of real use. The most common reason a Statement of Use is refused.
Accuracy about scope
Claim only what you are actually selling.
The dates of first use. Two of them: the date you first used the mark anywhere, and the date you first used it in commerce.
A specimen. You need to submit actual evidence of the mark being used. For goods, the USPTO wants the mark on the product, its packaging, or a genuine point-of-sale display. For services, it wants advertising or materials showing the mark used in connection with the service you actually provide. A mockup is not a specimen. A logo file on its own is not a specimen. This is the single most common reason a Statement of Use gets refused.
Evidence of the mark in actual use.
- The mark on the product itself
- The mark on packaging, tags, or labels
- A genuine point-of-sale display
- For services, advertising or materials showing the mark used in connection with the service you actually provide
Evidence of an intention, not a use.
- Mockups and renderings of packaging that does not exist yet
- A logo file on its own
- Digitally created images of the product
Accuracy about scope. If your application covers five items and you are only selling three, the Statement of Use has to reflect that. You can delete the ones you are not using, or in some cases divide the application so the ready goods register now and the rest continue. What you cannot do is claim use across the board and hope nobody checks.
Filing the Statement of Use does not mean you are registered
The USPTO examines the Statement of Use. If the specimen or the dates raise a problem, an office action issues and you are back in correspondence. Registration issues once the office accepts it.
If you have already missed it
Do not assume it is over, but do not wait either. If the delay was genuinely unintentional there may be a petition to revive available. It is time-limited, it is not automatic, and it costs more than filing on time would have. The sooner you raise it, the more options exist.
The Notice of Allowance is the notice. There is no reminder coming.
The practical advice
Calendar the date the day the notice arrives, and calendar a working deadline a week earlier. Assign one person responsibility for it. The Notice of Allowance is the notice and there is no reminder from the USPTO coming.
If you are approaching the window and are not sure which filing you need, our Statement of Use page sets out what is involved and what it costs. Send us the serial number and we will tell you exactly where you stand.
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This article is general information, not legal advice, and reading it does not create an attorney-client relationship. Rules differ by state and change over time. Please speak with a licensed attorney about your own situation.