Statement Of Use Deadlines

By Published On: September 19th, 2024Categories: Business, LawTags: , ,

THE DEADLINE TO FILE A STATEMENT OF USE FOR U.S. INTENT-TO-USE TRADEMARK REGISTRATION APPLICATIONS

In an intent-to-use application to register a trademark, service mark, collective mark, or certification mark (hereinafter collectively “mark”), the deadline to submit the evidence of use, a “statement of use,” and the required fee per class of goods and services (collectively hereinafter the “statement of use”) is six (6) months after the notice of allowance mailing date1. Failure to file the necessary statement of use on time will result in abandoning the application to register the mark. However, it is possible to get a limited number of extensions of time to file the required statement of use22b.

An applicant may request an additional 6-month period to file the statement of use before the expiration of the six months provided in the notice of allowance. In addition to this first extension of time, the USPTO may extend the time for filing the statement of use only upon a showing of good cause by the applicant. However, any requests by an applicant to extend the time to file a statement of use beyond 12 months from the notice of allowance cannot go beyond 36 months from the notice of allowance date:

Document Issue/Filing Date Statement Of Use Deadline
Notice Of Allowance  January 1, 2025 July 1, 2025
First Request For 6-month Extension Between January 2, 2025, and July 1, 2025 January 1, 2026
Second Request For 6-month Extension - Good Cause Shown Between July 2, 2025, and January 1, 2026 July 1, 2026
Third Request For 6-month Extension - Good Cause Shown Between January 2, 2026, and July 1, 2026 January 1, 2027
Fourth Request For 6-month Extension - Good Cause Shown Between July 2, 2027, and January 1, 2027 July 1, 2027
Fifth and FINAL Request Allowed For 6-month Extension - Good Cause Shown Between January 2, 2027, and July 1, 2027 January 1, 2028

The USPTO has issued regulations to determine what constitutes good cause for filing a request for an extension of time after the first request. Under these regulations, a showing of good cause must include:

  1. For a trademark or service mark, a statement of the applicant’s ongoing efforts to use the mark in commerce on or in connection with each of the relevant goods or services. Those efforts may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain governmental approval, or other similar activities. In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts to use the mark in commerce3.
  2. For a collective mark, a statement of ongoing efforts to use the mark in commerce by members on or in connection with each of the relevant goods or services or in connection with the applicant’s collective membership organization. Those efforts may include the development of standards, the steps taken to acquire members, such as marketing and promotional activities targeted to potential members, training members regarding the standards, or other similar activities. In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts for the applicant’s members to use the mark in commerce4.
  3. For a certification mark, 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. Those efforts 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. In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts for the applicant’s authorized users to use the mark in commerce5.

If you have questions about the deadline for preparing or filing a statement of use in connection with a trademark registration application, please request an attorney appointment.

End Notes

Explore Topics

Recent Posts