A Statement of Use (SOU) is required when a trademark application was originally filed as “intent to use” (ITU). An ITU application means that when the trademark application was not being used on goods or services at the time of filing.
After a trademark application is filed an examining attorney at the USPTO reviews the application. An ITU application may receive a notice of allowance if the examining attorney approves the application. But because the application was filed as intent-to-use, the trademark is not registered. It is approved. The applicant still must show “use in commerce” before the trademark can be registered.
A Statement of Use is filed to show use in commerce. The USPTO has specific rules regarding the timing of filing an SOU. The applicant has six months after a notice of allowance file a statement of use. If the applicant cannot show use in commerce within six months then the applicant can request an extension of time to file an SOU. Each extension of time is for six months. So, a request for extension of time must be filed every six months until an SOU is accepted and approved by the USPTO.
The date of the notice of allowance is the critical date for determining the USPTO filing deadlines. The recurring six-month deadlines are based on the date of the notice of allowance.
Why An “Insurance” Request for Extension of Time Is Important. At the time this article is being written, the USPTO is taking at least four months to review an SOU. This means that the six-month deadline may expire before the USPTO examines the SOU.
For example, if a notice of allowance issued on Oct. 5, 2023, the deadline to file an SOU is April 5, 2024. If the applicant files the SOU in February 2024 there is essentially no chance that the USPTO will review the SOU before the April 5, 2024 deadline. For this reason, it’s best to file an “insurance” request for extension of time. This extends the deadline to show use in commerce for another six months, until Oct. 5, 2024.
When the examining attorney finally reviews the SOU (in our example, estimated to happen around June 2024) the examining attorney may reject the SOU. That happens. Examining attorneys may issue a rejection as part of the examination process.
In our example, if the applicant filed an “insurance” RFET the applicant will have until Oct. 5, 2024. This is particularly important if the examining attorney rejects the SOU claiming that it does not show use in commerce. The “insurance” RFET means that the applicant can create new evidence to show use of the mark and submit that before the Oct. 5, 2024 deadline. This is key. If the applicant did not file the “insurance” RFET, then the applicant cannot create new evidence of use of the mark. The deadline to show use in commerce expires if an RFET is not filed. In our example, if an RFET had not been filed, the applicant could only use evidence of use that was in existence as of April 5, 2024.
These timing issues mean that an “insurance” request for extension of time is a good way to give a trademark applicant time to correct issues if a statement of use is not accepted.
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