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Trademark Basic Facts
ADDITIONAL REQUIREMENTS FOR "INTENT
TO USE"APPLICATION
Before the USPTO will register a mark that
is based upon a bona fide intention to use the mark
in commerce, the owner must:
use the mark in commerce; and
file an Allegation of Use.
What is an Allegation of Use?
An Allegation of Use is a sworn statement signed
by the applicant or a person authorized to sign
on behalf of the applicant (see signature) attesting
to use of the mark in commerce. With the Allegation
of Use, the owner must submit:
a filing fee of $100 per class of goods/services;
and
one specimen showing use of the mark in commerce
for each class of goods/services.
When do I file an Allegation of Use?
You may file the Allegation of Use only
on or before the day the examining attorney approves
the mark for publication in the Official Gazette
(an Allegation of Use filed before the mark is approved
for publication is called an Amendment to Allege
Use); or
on or after the day the USPTO issues the Notice
of Allowance (an Allegation of Use filed after the
Notice of Allowance is issued is called a Statement
of Use).
The Amendment to Allege Use and the Statement of
Use include the same information, and differ only
as to the time when it is filed. If you file an
Allegation of Use between the period after the mark
is approved for publication but before the Notice
of Allowance is issued, the USPTO will return it.
Is there a deadline for filing the Statement
of Use after the Notice of Allowance issues?
Yes. Once the USPTO issues the Notice of
Allowance, you have six (6) months to file the Statement
of Use. The six-month period runs from the date
the USPTO issues the Notice of Allowance, not the
date you receive it. If you have not used the mark
in commerce, you must file a Request for an Extension
of Time to File a Statement of Use (Extension Request)
before the end of the six-month period, or the application
will be declared "abandoned."
What is a Request for an Extension of Time
to file a Statement of Use?
An Extension Request is a sworn statement
signed by the owner or a person authorized to sign
on behalf of the owner (see signature), stating
that the applicant still has a bona fide intention
to use the mark in commerce, and needs additional
time to use the mark in commerce. A filing fee of
$150 per class of goods/services must accompany
the Extension Request. The form for filing the Extension
Request is available at http://www.uspto.gov/teas/eTEASforms.htm.
The Extension Request, if granted, gives the owner
an additional six (6) months to either:
use the mark in commerce and file a Statement of
Use; or
file another Extension Request.
You may continue to file Extension Requests every
six (6) months. However, you must use the mark and
file a Statement of Use within three (3) years of
the date the Notice of Allowance issues. The USPTO
will not register a mark if, after thirty-six (36)
months of the mailing date of the Notice of Allowance,
no Statement of Use has been filed.
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