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Filing an Insurance Extension When Filing a Trademark Application Statement of Use-

Why Can This Be Important?

  • For intent-to-use trademark applications, Trademark Rule 2.89(e)(1) provides for one extension request to be filed with or after the statement of use (SOU) so long as it is filed within the same 6 month period the statement of use was filed. 37 C.F.R. §2.89(e)(1). This is often referred to as an "insurance" extension request.

  • Why is this insurance? An applicant may not withdraw the statement of use (Trademark Rule 2.89(e)(1). But, an applicant may file an insurance extension is to secure additional time to correct any deficiency in the statement of use (SOU). Some deficiencies can only be corrected before the expiration of the deadline for filing statement of use. TIMING MAY BE CRUCIAL TO SUCCESS.

  • Mistakes jeopardize the trademark application and mistakes can later jeopardize the registration if an applicant files specimens that were not yet available during the applicable time frame but claims that they were.

  •  Statements of Use are the cause for many refusals, many of which can be fixed and overcome if there is still time left before the deadline. This deadline is different than the 6 month deadline to respond to a refusal.

  • The statement of use must be filed within 6 months of the Notice of Allowance or an extension must be filed. Missing the deadline results in the trademark application going abandoned.

  • A Statement of Use is a sworn statement made to the USPTO and a person is charged with knowing what they  are signing. By failing to make any appropriate inquiry, someone may sign the statement of use with a ‘reckless disregard for the truth.' but even an honest mistake can hurt the application or registration.

  • An applicant may need the extra time afforded by an INSURANCE EXTENSION to assure that proper specimens are available within the time allowed.

  • Specimen errors are common and difficult to overcome. Substitute specimens used to overcome refusals must be be in use in commerce during the allotted time left plus 1 or two extensions  depending if the extensions are filed in the correct time periods.

  • There are multiple strategies, including INSURANCE EXTENSIONS to assure that a mark is successfully registered. One strategy is to file an Amendment to Allege Use instead of a Statement of Use.

  • FACTS MATTER and EXPERIENCE MATTERS. Why not get help on your application and Statement of Use? Getting help from Not Just Patents ® may cost less than you think and help more than you might expect. Brief initial consultations are usually free.

Frequently Asked Questions About Statements of Use (SOU)

What does ‘Allowed for Registration - Principal Register (SOU accepted)’ mean? This means the Statement of Use has been approved for an Intent to Use application that has already been through its Opposition Period with no opposition and the trademark should register in 4-6 weeks.

What does ‘Approved For Pub - Principal Register’ mean? This means the final review prior to publication has been completed, application will be published for opposition.

What does ‘Notice of publication’ mean? This means the final review prior to publication has been completed and the application will be published for opposition (but this is not the publication date).

What does ‘Published for opposition’ mean? Under U.S. Trademark law, 15 U.S.C. §1062(a), a trademark or service mark must be published for opposition before it can be registered on the Principal Register. This Publication and [short] time period (30 days) give someone who may be harmed by a registration of a federal trademark a way to oppose (or object to) the registration. Not just anyone can object/oppose, only any person or entity who believes that he/she/it would be damaged by the registration of the mark and can prove both Standing  and Grounds.

What does  ‘New Application Entered In Tram’ mean? This means that the USPTO has accepted the new application and has put it into TRAM, the USPTO database. What is TRAM? The Trademark Reporting and Monitoring (“TRAM”) System. For applications filed through TEAS, the data provided by the applicant is loaded directly into the USPTO’s automated TRAM System. For applications filed on paper, the application documents are scanned into the Trademark Image Capture and Retrieval System (“TICRS”), and the data is manually entered into TRAM. TRAM is used by USPTO employees to obtain information about the location and status, prosecution history, ownership, and correspondence address for applications and registrations. This information is available to the public through the Trademark Status and Document Retrieval System (“TSDR”) database, available on the USPTO’s website at http://tsdr.uspto.gov.

What does ‘Allowed for Registration - Principal Register (SOU accepted)’ mean? A Statement of Use (SOU) is one form of An Allegation of Use, a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. (Since most trademarks are now filed electronically, this is usually an electronic signature.) With the Allegation of Use, the owner must submit: a filing fee of $100 per class of goods/services; and one specimen. A specimen is a sample of the use of the mark that acts as evidence that the mark has been properly used in commerce for each class of goods/services. The actual form for filing the allegation of use is available at http://www.uspto.gov/teas/index.html. Note that the type of sample appropriate for submission is different for a trademark (sales of goods) than it is for a service mark (sales of services). An Amendment to Allege Use (AAU) is another type of Allegation of Use but differs in the time period when it is submitted.  

What is a ‘NOA Mailed - SOU Required From Applicant’?  A written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette is called a Notice of Allowance (NOA), and has consequently been allowed for registration. It does not mean that the mark has registered yet. Notices of allowance are only issued for applications that have been filed based on "Intent to Use". The Notice of Allowance is important because the issue date of the Notice of Allowance establishes the due date for when an applicant is required to file a Statement of Use (SOU). After receiving the Notice of Allowance, the applicant must file a Statement of Use or a request for an extension of time to file a Statement of Use within 6 months from the issue date of the Notice. If the applicant fails to timely file a Statement of Use or a request for an extension of time to file a Statement of Use, the application will go abandoned. TEAS Statement of Use Received is the status message when the SOU is received by the USPTO.

What does ‘Statement Of Use Processing Complete’ mean? This means that changes have been made to the trademark record to show that the SOU has been received but not yet approved.

  • A new rule is effective on February 17, 2017 *March  21, 2017 for Section 8 affidavits of use, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part. See more information about this new rule. [*The effective date of this rule has been delayed until March 21, 2017, in accordance with the memorandum of January 20, 2017, from the Assistant to the President and Chief of Staff, entitled “Regulatory Freeze Pending Review.” See 82 Fed. Reg. 10273.]

PROTECTING YOURSELF MEANS GETTING THE RIGHT HELP: At the end of the day, a trademark owner is responsible for protecting their own rights. A owner must claim and enforce their rights in order to receive the benefits.

Not Just Patents® Legal Services is the right help. Our success rate with registering trademarks is very good and our costs are not high which can turn out to be a great investment. Our success rate with answering office actions is also very good but unfortunately, many refusals given to junior users for Likelihood of Confusion stick because the junior user really is jeopardizing the success of someone else who used the trademark first and registered their trademark first. But not always. Sometimes the one who registered first was not the first to use the trademark and enforcing rights requires going further and opposing or cancelling the trademark of the owner who registered first  or getting a consent agreement worked out. We can help with this too.

BUT WHAT IF THE FILING SERVICE I FOUND DIDN’T DO A GOOD JOB ON YOUR TRADEMARK REGISTRATION? A bad application or no registration or even Supplemental Registration means less rights and rights that are harder to enforce. But more expensive doesn’t necessary mean more rights, a Not Just Patents ® Federal Registration of a Trademark is NOT expensive. We often overcome refusals on applications that were filed by business owners themselves or filed by a filing service. From what we hear, some firms have cheap application fees but charge a lot to overcome refusals that they may have helped cause.

A lawyer that lists trademarks as one of many, many services that they provide may be just as bad as a service that doesn’t use any lawyers/experts at all and disclaims that their service does not replace competent advice. Call us in the U.S. at 1-651-500-7590: We can help.

Why Pursue a Federal USPTO Trademark Registration?

Why Aren’t Common Law Rights Good Enough?

There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:

  • Can be used against future applications of confusing similar marks by the USPTO;
  • Mark is easy to find for search reports;
  • Owner can use ® to symbolize federal registration;
  • Incontestability of mark after 5 years;
  • Statutory presumption of validity;
  • Statutory presumption of ownership;
  • Statutory presumption of distinctiveness or inherently distinctive;
  • Statutory presumption of exclusive right to use the mark in commerce;
  • Provides access to anti-counterfeiting statutes. For example, a trademark on the Principal Register can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods;
  • Ability to bring federal criminal charges against traffickers in counterfeits;
  • Use of the U.S. registration as a basis for prior use to obtain registration in foreign countries without having actual use in commerce in those countries;
  • Owner gets trademark rights in all U.S. states even if only in commerce in less states.

A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.

Not Just Patents® and AIM HIGHER® are a registered trademarks of Not Just Patents LLC for Legal Services on the Principal Register.