When you file a trademark application on an Intent To Use basis, there is an additional step to the process. Before you get your trademark registration, you will need to show use of the mark in commerce in connection with all of the goods or services listed in your application. This is done by submitting the Statement of Use. But what if your mark is not in use when you receive a Notice of Allowance? You must respond to that Notice of Allowance within six months, or your application will go abandoned. But you cannot file the Statement of Use if you do not have use of the mark. This is where the Request for an Extension of Time comes into play. You can file a Request for an Extension of Time to get an additional six months to file the Statement of Use.
The Request for an Extension of Time says that you still intend to use the mark and, if granted, allows you additional time to put the mark into use in commerce. It is very important to know whether you should file a Request for an Extension of Time or a Statement of Use, and you should consider speaking with an attorney if you aren’t sure which one you need to file. If you file a Statement of Use prematurely, your trademark registration can be subject to cancellation. While you might “get away with” submitting your Statement of Use early, and save yourself the additional cost of filing a Request for an Extension of Time, you are taking a big risk with your registration. And you do not want your registration to be cancelled just because you wanted to save yourself the cost of filing a Request for an Extension of Time. Your trademark registration will be worth much more than that to your business.
You can make up to five Requests for an Extension of Time, but you have to pay a filing fee (and legal fee, if you choose to work with an attorney) for each one. This means that you can buy up to three years for yourself to have use of your mark in commerce. That three years is from the Notice of Allowance date, and does not include the time it took for the Notice of Allowance to issue after you filed your trademark application. That usually takes about a year. So, as you can see, if you file on an Intent To Use basis, you have a long time to begin using your mark in commerce. I typically recommend filing for a trademark application if you believe you will be using the mark within one to two years, though.
Are You Not Sure Whether You Need To File a Request for an Extension of Time Or a Statement of Use?
It is important to know whether you are ready to file a Statement of Use, or if a Request for an Extension of Time is needed. You also need to make sure your filing is done accurately, and on time in order to avoid abandonment of your trademark application. If you would like to speak with me about making a Request for an Extension of Time, please feel free to call me at (314) 479-3668, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
