In an extension request, the applicant must identify or reference the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3). The goods/services identified in the extension request must conform to those identified in the notice of allowance. 37 C.F.R. §2.89(f). If the applicant wants to delete goods/services from the application, the applicant should clearly specify those goods/services to be deleted.
The applicant may incorporate by reference the goods/services listed in the notice of allowance. See 37 C.F.R. §2.89(f). This is advisable where applicant intends to retain all the goods/services identified in the notice of allowance to avoid the possibility that goods/services may be inadvertently omitted. Thus, the applicant may specify all the goods/services in the notice of allowance by electing the TEAS form option that covers "all the goods/services listed in the Notice of Allowance" for a trademark or service mark, and covers "the goods/services/collective membership organization listed in the Notice of Allowance" for a collective/certification mark.
If the applicant lists the goods/services with specificity in the extension request, and omits any goods/services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted. 37 C.F.R. §2.89(f). The applicant may not thereafter request that the goods/services be reinserted in the application. Id. In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing an extension request for the omitted goods/services.
Permitted paper filings. If an extension request permitted to be filed on paper (see TMEP §301.02) fails to identify the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU staff will assume that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with all the goods/services identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89. In re Omega-3 Mktg., Inc., 35 USPQ2d 1158, 1159 (Comm’r Pats. 1994).
If the paper-filed extension request lists goods/services to be deleted and the result would be to delete all of the goods/services in the notice of allowance, or if the applicant fails to identify or incorporate by reference any goods/services, the USPTO will presume this was a clerical error. Applicant will be allowed to correct the mistake. The ITU staff will issue a letter noting that no goods/services were specified or incorporated by reference in the extension request, and granting applicant thirty days in which to submit a verified statement clarifying the goods/services. However, if by mistake the applicant lists goods/services to be deleted and removal does not result in the deletion of all goods/services, the goods/services specifically listed will be deleted and may not later be reinserted.
See TMEP §1107 regarding amendments to the identification of goods/services filed between the issuance of the notice of allowance and the filing date of the statement of use.
In an extension request for a collective membership mark, the applicant must, in lieu of goods or services, instead identify or reference the nature of the collective membership organization in connection with which the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a)(3), (b)(3). The collective membership organization identified in the extension request must conform to the notice of allowance. 37 C.F.R. §2.89(f).
Permitted paper filings. If an extension request permitted to be filed on paper (see TMEP §301.02) fails to identify the goods/services/collective membership organization with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU staff will assume that the applicant has a continued bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce on or in connection with all the goods/services/collective membership organization identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89. In re Omega-3 Mktg., Inc., 35 USPQ2d 1158, 1159 (Comm’r Pats. 1994).
Trademarks and Service Marks
A request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with the goods/services identified in the notice of allowance. 37 C.F.R. §2.89(a)(3), (b)(3). The USPTO will accept an allegation of actual use in commerce as meeting the requirement for an allegation of bona fide intention to use the mark in commerce in an extension request. In re Vitamin Beverage Corp., 37 USPQ2d 1537, 1539 (Comm’r Pats. 1995).
This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request. 15 U.S.C. §1051(d)(2); In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991).
See TMEP §1101 for additional information about the requirement for an allegation of the applicant’s bona fide intention to use the mark in commerce.
Collective Marks and Certification Marks
For a collective trademark, collective service mark, collective membership mark, or certification mark filed under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), a request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce because use of these types of marks is by someone other than the actual owner. 37 C.F.R. §§2.44(a)(4)(ii), 2.45(a)(4)(ii)(C); TMEP §§1303.01(b)(i), 1304.02(b)(i), 1306.02(b)(i). The USPTO will accept an allegation of actual use in commerce as meeting this requirement. Cf. In re Vitamin Beverage Corp., 37 USPQ2d 1537, 1539 (Comm’r Pats. 1995).
This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request. 15 U.S.C. §1051(d)(2); cf. In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991).
See TMEP §1101 for additional information about the requirement for an allegation that the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce.
No showing of good cause is required in a first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a), (b)(4), (d). A showing of good cause for a trademark or service mark must include a statement of the applicant’s ongoing efforts to make use of the mark in commerce on or in connection with each of the goods/services covered by the extension request. 37 C.F.R. §2.89(d). Efforts to use the mark in commerce may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities, such as efforts to secure funding. Id. In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. Id. Examples of activities that would not be acceptable to show good cause include physical illness or disability and lack of staff and resources due to economic downturn.
A mere assertion that the applicant is engaged in ongoing efforts is not sufficient; the efforts must be specified. In re Comdial Corp., 32 USPQ2d 1863, 1864 (Comm’r Pats. 1993). However, the USPTO will not require a detailed explanation or evidence in a showing of good cause. The statement concerning good cause should refer to the types of activities listed in the rule or other similar types of activities. For example, the applicant may simply state that the applicant is engaged in manufacturing and promotional activities.
The applicant may also satisfy the requirement for a showing of good cause by asserting that the applicant believes it has made valid use of the mark in commerce and (1) is in the process of preparing a statement of use but may need additional time to file it, or (2) is concurrently filing a statement of use but is requesting the extension of time to file a statement of use in case the USPTO finds the original statement of use to be fatally defective. However, such a statement will be accepted only once as a statement of the applicant’s ongoing efforts to make use of the mark in commerce. Repetition of these same allegations in a subsequent extension request is not, without more, deemed to be a statement of the applicant’s ongoing efforts, as required by 37 C.F.R. §2.89(d). In re SPARC Int’l Inc., 33 USPQ2d 1479, 1480 (Comm’r Pats. 1993). If these allegations are repeated, the extension request will be denied.
If an extension request does not include a showing of good cause, or if the showing of good cause in an extension request is deemed insufficient, the ITU staff will issue an Office action denying the extension request but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause). This showing may be submitted even if the statutory period for filing the statement of use has expired.
See TMEP §1108.02(g) for information regarding good cause in an extension request for a collective mark and §1108.02(h) for information regarding good cause in an extension request for a certification mark.
No showing of good cause is required in a first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a), (b)(4), (d). A showing of good cause for a collective trademark, collective service mark, or collective membership mark must include a statement of ongoing efforts to make use of the mark in commerce by members on or in connection with each of the relevant goods/services/collective membership organization covered by the extension request. Efforts to use the mark in commerce may include the development of standards, steps taken to acquire members such as marketing or promotional activities targeted to potential members, training members regarding standards, and other similar activities. 37 C.F.R. §2.89(d)(2). In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. Id.
If an extension request does not include a showing of good cause, or if the showing of good cause in an extension request is deemed insufficient, the ITU staff will issue an Office action denying the extension request but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause). This showing may be submitted even if the statutory period for filing the statement of use has expired.
See TMEP §1108.02(f) for general information regarding good cause in an extension request and §1108.02(h) for information regarding good cause in an extension request for a certification mark.
No showing of good cause is required in a first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a), (b)(4), (d). A showing of good cause for a certification mark must include a statement of ongoing efforts to make use of the mark in commerce by authorized users on or in connection with each of the relevant goods or services covered by the extension request. Efforts to use the mark in commerce may include the development of certification standards, steps taken to obtain governmental approval or acquire authorized users, marketing and promoting the recognition of the certification program or of the goods or services that meet the certification standards of the applicant, training authorized users regarding the standards, or other similar activities. 37 C.F.R. §2.89(d)(3). In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. Id.
If an extension request does not include a showing of good cause, or if the showing of good cause in an extension request is deemed insufficient, the ITU staff will issue an Office action denying the extension request but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause). This showing may be submitted even if the statutory period for filing the statement of use has expired.
See TMEP §1108.02(f) for general information regarding good cause in an extension request for a trademark or service mark and §1108.02(g) for information regarding good cause in an extension request for a collective mark.
An applicant may file a request for an extension of time to file a statement of use with a statement of use, or after filing the statement of use if there is time remaining in the existing six-month period in which the statement of use was filed, provided that granting the extension request would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). The applicant may not request any further extensions of time after this request. Id.
The purpose of such an extension request, also called an "insurance" extension request, is to secure additional time to correct any deficiency in the statement of use that must be corrected before the expiration of the deadline for filing the statement of use. See TMEP §1109.16(a) regarding the deficiencies that must be cured before expiration of the statutory filing period, such as specimen issues. Consider the following examples:
Example: If the notice of allowance was issued February 6, 2009, and the applicant files a statement of use on August 6, 2009 (but does not file an "insurance" extension request), the applicant has until August 6, 2009 to cure any deficiency that must be corrected before the expiration of the statutory period for filing the statement of use. After August 6, 2009, it is too late to file an "insurance" extension request, because no time remains in the existing six-month period in which the statement of use was filed.
Example: If the notice of allowance was issued February 6, 2009, the applicant could file a statement of use, together with an "insurance" extension request, on or before August 6, 2009. If the extension request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.
Example: If the notice of allowance was issued February 6, 2009, and the applicant filed a statement of use on February 7, 2009, the applicant could file an "insurance" extension request within the time remaining in the existing six-month period in which the statement of use was filed, i.e., on or before August 6, 2009. If the request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.
Example: If the notice of allowance was issued February 6, 2009, and the applicant files a request for an extension of time to file a statement of use on August 6, 2009, the applicant has until February 6, 2010 to file a statement of use or a second extension request. If the applicant files a statement of use, together with an "insurance" extension request, on or before February 6, 2010, and the extension request is granted, the applicant would have until August 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.
An "insurance" extension request filed with or after a statement of use must meet all relevant requirements, including payment of the applicable fee. If the request is not the first request for an extension of time, and thus a showing of good cause is required, the applicant may satisfy the requirement for a showing of good cause by asserting that the applicant believes that valid use of the mark in commerce has been made, as evidenced by the statement of use, but that if the statement of use is found to be fatally defective, the applicant will need additional time to correct defects or file a substitute statement of use. 37 C.F.R. §2.89(e)(2); TMEP §1108.02(f).
The filing fee for the "insurance" extension request will not be refunded, even if the extension is not needed to perfect the statement of use.
In a multiple-class application, the "insurance" extension request must cover all the classes stated in the notice of allowance. If the applicant intends to submit an "insurance" extension request for less than all the classes, the applicant must either (1) identify in the extension request the classes being deleted or (2) submit a request to divide for those classes that will retain the §1(b) filing basis and a separate extension request for those classes. See TMEP §§1110–1110.11(a) regarding a request to divide an application and §1110.07 regarding dividing an application when the statement of use is due. If the applicant does not comply with these requirements, the ITU staff will contact the applicant to clarify the deficiencies and process the "insurance" extension request accordingly. If the ITU staff issues a letter regarding the deficiencies and the applicant fails to respond within the time permitted, the "insurance" extension request will not be processed.
If the applicant files an "insurance" extension request in conjunction with a statement of use, and the applicant submits fees sufficient for one but not both filings, the USPTO will apply the fees as follows: (1) if there is enough money to cover the extension request, the USPTO will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the USPTO will apply the fees to the statement of use. See TMEP §1110.07 regarding the application of fees when an applicant submits a request to divide along with an extension request and statement of use.
If an applicant files an "insurance" extension request with a statement of use and the extension request is defective, the ITU staff will deny the request and advise the applicant of the reason for denial. If the statement of use meets the minimum requirements for examination on the merits, the ITU staff will then forward the application to the examining attorney. If there is time remaining in the current period for filing a statement of use, the applicant may file a substitute extension request.
See TMEP §1108.03(a) regarding the processing of an extension request after a statement of use has been referred to an examining attorney.
Under 37 C.F.R. §2.89(e)(1), an applicant may file a request for an extension of time to file a statement of use after filing a statement of use if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. See TMEP §1108.03.
When an extension request is filed after the statement of use has been referred to the examining attorney, the request will be referred to the examining attorney. The USPTO will not examine the extension request unless the applicant needs the extension to perfect the statement of use.
If the examining attorney issues a requirement or refusal based on the statement of use, the examining attorney should note in the Office action that the extension request is being referred to the ITU/Divisional Unit for processing of the extension request. The filing of such an extension request is not in itself a proper response to an outstanding Office action, and does not extend the time for responding to an outstanding Office action. See TMEP §1109.16(c), (d). If the examining attorney does not issue a requirement or refusal based on the statement of use, the USPTO will not take formal action on the extension request.
The USPTO will not refund the filing fee for the extension request, even if the extension is not needed to perfect the statement of use.
If an extension request is denied, the applicant will be notified of the reason(s) for the denial.
To avoid abandonment of the application, the applicant must meet the minimum requirements for filing the extension request on or before the deadline for filing a statement of use.
If the USPTO denies the extension request because the applicant failed to meet minimum filing requirements on or before the statutory deadline, and there is time remaining in the applicant’s existing period for filing the statement of use, the applicant may file the statement of use and/or a substitute extension request. Otherwise, the applicant’s only recourse after denial of the extension request is a petition under 37 C.F.R. §§2.89(g) and 2.146, or a petition to revive under 37 C.F.R. §2.66, if appropriate. See TMEP §1108.05 regarding petitions that may be filed after the denial of an extension request.
For a trademark or service mark, the minimum filing requirements for an extension request that must be satisfied before expiration of the statutory deadline are: (1) a verification or declaration properly signed (see TMEP §611.03(a) regarding who may sign a verification) and stating that the applicant has a continued bona fide intention to use the mark in commerce; (2) an identification of the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. In re El Taurino Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996).
For a collective mark or certification mark, the minimum filing requirements for an extension request that must be satisfied before expiration of the statutory deadline are: (1) a verification or declaration properly signed (see TMEP §611.03(a) regarding who may sign a verification) and stating that the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; (2) an identification of the goods/services/collective membership organization on or in connection with which the applicant has a continued bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce; and (3) payment of the prescribed fee for at least one class of goods or services. Cf. In re El Taurino Rest., Inc., 41 USPQ2d 1220, 1222 (Comm’r Pats. 1996).
If an extension request is denied, and there is no time remaining in the statutory filing period, the application is abandoned. Applicant’s recourse is as follows:
Filing a petition or request for reinstatement does not stay the time for filing a statement of use or further extension request. See 37 C.F.R. §2.89(g). However, if the applicant fails to file a statement of use or further request(s) for extension(s) of time to file a statement of use during the pendency of a petition, the applicant will be given an opportunity to perfect the petition by paying the fee(s) for each missed extension request and filing the last extension request, or statement of use, that should have been filed. In re Moisture Jamzz, Inc., 47 USPQ2d 1762, 1763-64 (Comm’r Pats. 1997).
If a petition is granted, the term of the requested six-month extension will run from the date of the expiration of the previously existing six-month period for filing a statement of use. 37 C.F.R. §2.89(g).
No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(e)(1).
An intent-to-use applicant must file an allegation of use to obtain a registration. See TMEP §1103. See TMEP §§1104–1104.11 regarding amendments to allege use.
Under 15 U.S.C. §1051(d), a statement of use must be filed within six months of the issue date of the notice of allowance, or within a previously granted extension of time to file a statement of use.
The statement of use must meet the following minimum filing requirements before it may be referred to an examining attorney for examination on the merits:
A statement of use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. §2.88(c)(3) for a verified statement that the mark is in use in commerce. In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992); see In re Conservation Tech. Inc., 25 USPQ2d 1079, 1080 (Comm’r Pats. 1992). In such case, the examining attorney will require a verified allegation that the "mark is in use in commerce" during examination. See TMEP §1109.09.
See TMEP §1109.02 regarding review of the statement of use for compliance with minimum filing requirements and §1109.06 regarding the requirements for a complete statement of use.
Statements of use are reviewed by the ITU/Divisional Unit to determine whether they are timely under 37 C.F.R. §2.88(a)(1) and in compliance with the minimum filing requirements listed in 37 C.F.R. §2.88(c). If the statement of use is untimely, either because it is premature or late, the ITU staff will notify the applicant in writing that the statement of use cannot be considered because it is untimely, and refund the filing fee.
If the statement of use is timely, but does not comply with one or more of the minimum filing requirements of 37 C.F.R. §2.88(c), the ITU staff will notify the applicant in writing of the defect and advise the applicant that the USPTO will not examine the statement of use on the merits unless the applicant corrects the defect before expiration of the deadline for filing a statement of use. 37 C.F.R. §2.88(d).
If the statement of use is filed by someone other than the owner of record, the ITU staff will issue an Office action granting the applicant thirty days in which to submit evidence to establish chain of title. See TMEP §1109.10 for further information regarding ownership issues.
If the applicant does not correct the deficiency before the expiration of the statutory deadline, the application will be abandoned. 37 C.F.R. §2.88(k). In such a case, the USPTO will not refund the filing fee.
The applicant may not withdraw the statement of use and return the application to the previous status of awaiting filing of the statement of use, even if the statement of use fails to meet the minimum filing requirements. 37 C.F.R. §2.88(f); TMEP §1109.17. However, in limited circumstances, an applicant may file an "insurance" extension request with or after the filing of a statement of use, if there is time remaining in the existing six-month period in which the statement of use was filed, to gain more time to comply with the statutory requirements for filing the statement of use. 37 C.F.R. §2.89(e)(1). See TMEP §1108.03 and §1109.16(c) for further information.
If the ITU staff determines that a statement of use does not meet the minimum filing requirements of 37 C.F.R. §2.88(c), and there is no time remaining in the statutory filing period, the application is abandoned. The applicant’s recourse is as follows:
No petition or request for reinstatement will be granted if it would extend the deadline for filing a statement of use beyond thirty-six months after the issuance of the notice of allowance. See 15 U.S.C. §1051(d)(2).
