USPTO Statement of Use Deadline & Extensions: When to File an “Insurance” Extension

A USPTO Statement of Use extension can be critical when an Intent-to-Use trademark applicant is not ready to prove use of the mark by the deadline that follows a Notice of Allowance. For a Section 1(b) Intent-to-Use application, the USPTO generally gives the applicant six months from the Notice of Allowance issue date to either file an acceptable Statement of Use (SOU) or request an extension of time. The Notice of Allowance date controls the recurring six-month periods, so understanding that date and the available extension options is essential to keeping the application alive.

An additional issue arises when an applicant has already filed an SOU but wants to preserve more time to correct certain deficiencies. In limited circumstances, the USPTO permits one extension request filed with or after the SOU. Trademark practitioners often refer to this as an “insurance” extension request.

This article focuses specifically on Statement of Use deadlines, ordinary six-month extensions, and insurance extensions. For a broader explanation of what an SOU is, the evidence it requires, and what happens after filing, see our guide to USPTO Statement of Use requirements.

Not Sure Which Statement of Use Deadline Applies to You?

A missed SOU deadline or the wrong type of extension can put an Intent-to-Use trademark application at risk. If you have received a Notice of Allowance, already filed a Statement of Use, or are unsure whether you need a regular or “insurance” extension, Adams Law Office can help you review the timing and next filing step.

Call (510) 649-1331 to discuss your Statement of Use deadline before the current filing period expires.

When Is a Statement of Use Due After a Notice of Allowance?

A Notice of Allowance is an important milestone in a Section 1(b) Intent-to-Use application, but it is not a trademark registration. It means the mark has reached the allowance stage, and the applicant must still establish qualifying use in commerce before the mark can be registered.

After the USPTO issues the Notice of Allowance, the applicant has an initial six-month period in which to take one of two actions:

• file a Statement of Use if the mark is in qualifying use in commerce; or
• file a Request for Extension of Time to File a Statement of Use if qualifying use has not yet begun or the applicant is not otherwise ready to submit the SOU.

The six-month period is calculated from the issue date of the Notice of Allowance, not from the date the applicant opens the notice, receives an extension approval, or begins preparing the SOU.

Simple example

Suppose the USPTO issues the Notice of Allowance on March 10.

The first SOU deadline generally falls six months later, on September 10.

By that deadline, the applicant should either:

File the SOU; if qualifying use has begun and the filing requirements can be satisfied,

or

File the first extension request if additional time is needed.

The important date is always tied back to the Notice of Allowance.

What If the Trademark Is Not Yet in Use by the Six-Month Deadline?

If the mark is not yet in qualifying use, an applicant should not file an SOU simply to avoid the deadline.

A Statement of Use represents that the mark is actually being used in commerce in connection with the goods or services for which use is claimed. The USPTO requires genuine use in the ordinary course of trade rather than token activity created only to preserve trademark rights.

Instead, an applicant who continues to have a bona fide intention to use the mark may file a Request for Extension of Time to File a Statement of Use.

The first extension request must be filed within six months after the Notice of Allowance and must include a verified statement that the applicant continues to have a bona fide intention to use the mark in commerce.

The USPTO’s current electronic filing fee for a six-month SOU extension request is $125 per class.

How Long Does a Statement of Use Extension Last?

Each ordinary extension provides another six months.

Importantly, those periods continue to run from the original Notice of Allowance schedule. They do not restart six months from the date on which the USPTO grants an extension request.

Using the earlier example:

Notice of Allowance: March 10
Initial deadline: September 10
After first extension: March 10 of the following year
After second extension: September 10
and so forth.

This is why tracking the original Notice of Allowance date is so important. A business should not assume that filing an extension later in six months creates a brand-new six-month deadline measured from the filing date.

How Many Statement of Use Extensions Can You Request?

An Intent-to-Use applicant may file a maximum of five ordinary six-month extension requests.

The first extension requires the applicant to maintain a bona fide intention to use the mark. The USPTO permits four additional extension requests after that. Those subsequent requests also require a showing of good cause, meaning the applicant identifies ongoing efforts to make use of the mark, such as product development, market research, steps to obtain distributors, or similar commercial preparations.

If all available extensions are used, the maximum period for filing the SOU is generally 36 months from the Notice of Allowance issue date.

So the structure is

1. Initial six-month SOU period
2. First six-month extension
3. Second extension
4. Third extension
5. Fourth extension
6. Fifth extension

By the end of the applicable statutory period, the applicant must satisfy the SOU requirements, or the Intent-to-Use application cannot continue indefinitely.

What Is an “Insurance” Extension of Time?

An insurance extension is not a completely different USPTO filing form. It is a request for an extension of time to file a statement of Use used in a particular situation with or after an SOU has already been filed.

USPTO rules allow one such request when the applicable requirements are satisfied. Its purpose is to preserve additional time to correct certain defects in the SOU that must be cured before the statutory SOU deadline expires.

This is different from the ordinary situation where the applicant has not yet filed an SOU because use has not begun.

An insurance extension becomes relevant when:

• The applicant has already submitted an SOU;
• Time remains within the applicable six-month period in which that SOU was filed;
• The applicant has not already exhausted the available extension periods; and
• The additional extension would not push the SOU deadline more than 36 months beyond the Notice of Allowance.

Only one extension request may be filed with or after an SOU, and once that insurance extension has been used, the applicant may not continue filing additional extensions afterward.

Ordinary SOU Extension vs. Insurance Extension

The distinction can be summarized this way:

The insurance extension is therefore better understood as a deadline-preservation tool, not as a second SOU or a separate type of trademark application.

Why Might an Applicant File an Insurance Extension After the SOU?

This is where the existing article has a valuable concept, but the reasoning should be updated.

The old version focused heavily on how many months the USPTO was taking to review SOUs in 2023. That should no longer be the basis for the recommendation.

The more important issue is whether the applicant will still have time to cure a deficiency that must be corrected by the statutory deadline.

The USPTO specifically identifies deficiencies involving matters such as specimens and dates of use as examples where an insurance extension can provide additional time to make a legally sufficient correction.

Consider a simplified situation.

An applicant files an SOU before the end of a current six-month period. The USPTO later determines that the specimen does not adequately demonstrate qualifying use.

If the applicable statutory SOU deadline has already expired, the applicant’s ability to cure the problem may be more limited than it would have been if an additional extension period had been preserved.

An insurance extension can therefore create additional time in which certain statutory deficiencies may be corrected.

That is the real strategic value of the filing.

Why Specimen Problems Make the Insurance Extension Important

A Statement of Use must include evidence showing actual use of the mark in commerce.

An unacceptable specimen cannot always be fixed simply by creating better evidence after the relevant statutory deadline has passed.

The Trademark Manual of Examining Procedure specifically identifies specimen problems as the type of deficiency that may need to be cured within the applicable SOU filing period. That is one reason the USPTO permits the limited insurance-extension mechanism.

For example, the USPTO may conclude that:

• A webpage does not function as an acceptable point-of-sale display for goods;
• An image is merely a mockup rather than evidence of actual marketplace use;
• A specimen does not associate the mark with the claimed services;
• The specimen shows a materially different presentation of the mark; or
• Use did not exist on the relevant goods or services by the date represented in the filing.

These are not merely administrative details. Some defects implicate whether the statutory use requirement was satisfied at the relevant time.

For a detailed discussion of specimen, declaration, goods/services, and other errors, see our guide to common Statement of Use filing mistakes.

Can You File an Insurance Extension After the Statement of Use?

Yes, but only in limited circumstances.

USPTO guidance permits the extension request to be filed with the SOU or after the SOU, provided there is still time remaining in the applicable six-month period in which the SOU was filed and the other requirements are satisfied.

This timing rule matters.

An applicant generally cannot wait until the statutory filing period is already over, discover a problem, and then retroactively create an insurance extension.

The availability of the extension should therefore be considered before the applicable six-month period expires.

Can You File More Than One Insurance Extension?

No.

The USPTO permits only one extension request with or after the Statement of Use. After that extension request has been filed, no further extensions may be requested.

This is an important correction to the wording of the current 2023 article.

The existing version says:

“A request for extension of time must be filed every six months until an SOU is accepted and approved by the USPTO.”

I would remove that sentence.

An applicant does not simply continue filing extensions every six months while waiting for the USPTO to approve an SOU.

Instead:

• Ordinary extensions are used before filing the SOU when more time is needed;
• Up to five ordinary extension periods are available within the overall three-year limit; and
• Only one qualifying insurance extension can be filed with or after an SOU.

That distinction needs to be very clear in the revised article.

Do You Need an Extension Just Because the USPTO Has Not Reviewed Your SOU Yet?

Not necessarily.

A timely filed SOU does not become late merely because the USPTO has not examined it before the current six-month period expires.

In fact, the USPTO currently notes that SOU filings are experiencing processing delays and tells applicants that they do not need to take action solely because their SOU remains pending review.

The reason to consider an insurance extension is therefore not simply

“The USPTO has not reviewed my filing yet.”

The more relevant question is

Could I need additional statutory time to correct a deficiency in my SOU that cannot be cured after the existing deadline?

That is a much more accurate way to evaluate an insurance extension.

How Much Does a Statement of Use Extension Cost?

The USPTO’s current fee for an electronically filed Request for Extension of Time to File a Statement of Use is $125 per class. The fee applies separately to each class covered by the extension request.

For example:

• one class: $125
• two classes: $250
• three classes: $375

These are USPTO government fees and do not include attorney fees.

Because USPTO fees can change, applicants should confirm the current fee schedule before filing.

What Happens If You Miss the Statement of Use Deadline?

If the applicant fails to timely file either an acceptable SOU or a required extension request, the USPTO can abandon the application.

The USPTO then issues a Notice of Abandonment.

In certain situations where the missed deadline was unintentional, an applicant may be able to file a Petition to Revive. The USPTO generally requires that the petition be filed within two months after the Notice of Abandonment; if the applicant did not receive the notice, additional timing rules apply.

A petition to revive is not an additional SOU extension.

The USPTO expressly warns that a petition cannot be used to extend the ultimate three-year statutory period for filing the SOU after the Notice of Allowance. If the three-year limit has expired after all available periods, the application generally cannot be revived on this basis.

For that reason, revival should be viewed as a possible remedy for certain unintentional missed deadlines, not as a substitute for managing SOU deadlines correctly.

What Happens If the USPTO Rejects or Questions the SOU?

After an SOU is determined to be timely and to satisfy the minimum filing requirements, a USPTO examining attorney reviews it for compliance with the Trademark Act and applicable rules.

Problems may involve, among other things:

• the specimen;
• claimed dates of use;
• whether use exists for the listed goods or services;
• verification or signature issues; or
• other statutory requirements.

Some problems can be corrected. Others become much more difficult if a statutory deadline has passed.

This is precisely why the timing of an insurance extension can matter.

If your issue concerns why an SOU was rejected, whether a specimen can be replaced, incorrect goods/services, dates of use, signatures, or another filing error, see our separate guide to common Statement of Use filing mistakes.

How to Think About the SOU Deadline Strategically

For an Intent-to-Use applicant, there are really three different timing situations:

Situation 1: The mark is in qualifying use, and the SOU is ready.

Prepare and file the SOU within the current statutory period.

Situation 2: The mark is not yet in qualifying use.

Do not prematurely file an SOU. File a timely extension request if the requirements are satisfied and additional extension periods remain.

Situation 3: The SOU has been filed, but additional curing time may be valuable.

Evaluate whether an insurance extension is still available before the current statutory period expires.

The correct strategy depends on where the application sits in the Notice of Allowance timeline and whether the SOU can satisfy the statutory requirements.

Frequently asked questions

1. How long do I have to file a Statement of Use after a Notice of Allowance?

You initially have six months from the Notice of Allowance issue date to file an SOU or a Request for Extension of Time to File a Statement of Use.

2. How many Statement of Use extensions can I request?

An applicant can ordinarily request up to five six-month extensions, subject to the applicable requirements. The SOU ultimately must be filed within the maximum 36-month period after the Notice of Allowance.

3. How much does a USPTO Statement of Use extension cost?

The current electronic USPTO fee is $125 per class for a six-month extension request.

4. What is an insurance extension for a Statement of Use?

An insurance extension is a single extension request filed with or after an SOU in qualifying circumstances to provide additional time to correct certain SOU deficiencies that must be fixed before the statutory deadline.

5. Can an insurance extension be filed after the SOU?

Yes, provided time remains in the applicable six-month period in which the SOU was filed and the other requirements are met.

6. Can I file multiple insurance extensions?

No. Only one extension request may be filed with or after an SOU, and additional extensions cannot be requested after that insurance extension.

7. Do I need an insurance extension simply because the USPTO has not reviewed my SOU?

No. A pending USPTO review by itself does not mean another filing is automatically required. The strategic concern is whether additional statutory time may be needed to correct certain deficiencies in the SOU.

8. What happens if I miss the SOU or extension deadline?

The application can become abandoned. If the missed deadline was unintentional, a Petition to Revive may be available if all applicable requirements and filing deadlines are met.

9. Does each new extension period run from the date my extension is approved?

No. The six-month periods are calculated from the Notice of Allowance issue date, not from the date an extension request is filed or granted.

10. Can I keep requesting extensions until the USPTO approves my SOU?

No. Ordinary extensions are subject to the five-extension and 36-month limits, and only one extension request may be filed with or after an SOU as an insurance extension.

Protect Your Intent-to-Use Trademark Application Before a Deadline Becomes a Problem

Statement of Use deadlines can be unforgiving, particularly when an applicant is balancing product launch timing, evidence of use, multiple classes, or a possible deficiency in an already-filed SOU.

The key is to identify the applicable six-month period before it expires and determine whether the correct next step is an SOU, an ordinary extension request, or, in the appropriate circumstances, an insurance extension.

Adams Law Office advises businesses in Berkeley, throughout California, and across the United States on Intent-to-Use applications, Statements of Use, extension requests, specimen issues, and other USPTO trademark filing requirements.

Call Adams Law Office at (510) 649-1331 to discuss your trademark application and upcoming Statement of Use deadlines.

For additional guidance on Intent-to-Use applications, USPTO filing deadlines, Statements of Use, and protecting a trademark through registration, follow Adams Law Office on LinkedIn and YouTube.