Preface
This brief note is not legal advice and is for educational purposes only.
At the time that you file a trademark (mark) application it can be based on:
- Actual use of the trademark at that time in which case you submit a specimen of actual use in commerce and a statement of actual use with dates of use, etc., and the initial fees, or
- Intent to use the mark in the future in which case at some later time (up to 3 years maximum (by buying time extensions discussed below)) you submit a specimen of actual use in commerce and an allegation of use (also called Amendment to Allege Use (AAU) if filed before publication, or Statement Of Use (SOU) if filed after publication) and extra fees for this later specimen filing.
SOU – the Statement Of Use – includes 1) a specimen, 2) a verified statement of use, and 3) fees.
Notice of Allowance
At some time after publication and a period for opposition you receive a notice of allowance (NOA). If you have not yet submitted a SOU (specimen of actual use in commerce with the statement of use and fees) then that needs to be done. The timeline below explains this and possible extensions that may be purchased if you are not yet actually using the mark in commerce.
| Time 0 | 6 mo | 12 mo | 18 mo | 24 mo | 30 mo | 36 mo | |||||
|---|---|---|---|---|---|---|---|---|---|---|---|
| Notice of Allowance Date (NOA) | NOA + 6 months | Buy 1st 6 month time extension | Buy 2nd 6 month time extension | Buy 3rd 6 month time extension | Buy 4th 6 month time extension | Buy 5th 6 month time extension | ABSOLUTE DEADLINE | ||||
| No cost to file SOU and no time extension purchase required | Can file in any period here by buying time extensions. †‡ Time extension request also requires a statement of ongoing efforts to use the mark in commerce. 15 USC § 1051(d)(2) | No more time extensions. | |||||||||
There is always the possibility that your SOU might be rejected and so if you submit the SOU too close to the deadline (e.g. near end of 6 months) without buying a time extension (called an insurance extension) you may not have time to respond and get the SOU allowed and will end up with an abandoned application. Note that once a SOU is filed you only get one more time extension (without proving why you need more time). So a good strategy is to buy a 6 month time extension at the end of a 6 month period, make sure it’s accepted, then promptly file the statement of use (SOU) and if needed buy the insurance extension at the end of the 6 month period. See 37 CFR § 2.88 and 37 CFR § 2.89. If extension requests are denied then it is possible to petition the Director.
You must buy each 6 month time extension before the 6 month period ends otherwise you end up with an abandoned application. You CANNOT wait to pay past time extensions.
If you are running up against this deadline and your SOU has been rejected several times you might want to file an appeal before the deadline to preserve your rights, or a petition.
Conclusion
You can buy time extensions in which to file your statement of use (SOU) which includes your specimen, fees, and verified statement, however there is a deadline and once you file your SOU only a single time extension (insurance) may be bought which may not extend past 36 months from your Notice Of Allowance (NOA) date. Consult your attorney.
