Sometimes, getting a new business started isn’t always a straightforward affair as one might have imagined. And in some cases, upcoming entrepreneurs can encounter hitches and setbacks despite their best preparations. For instance, despite having a compelling strategy for your start-up, you might find that getting certain licenses for your business takes longer than expected, or changes in global commodity prices necessitate a significant increase in your initial working capital.
Some of these unforeseen challenges can make it impossible for you to open the doors of your new business on the intended date. But one of the things business owners can do is file a trademark application with an intent-to-use (ITU) basis to register or reserve the right to the mark while they’re still developing their business.
Trademark Filing Under Intent To Use Basis
As mentioned, if you’re not yet ready to start selling your business’s products or services, filing your trademark under the intent-to-use basis allows you to preserve your business name, logo, symbols, slogans, goods or product names, and your business’s other intellectual property.
This means the intent-to-use basis can provide you a lifeline when filing for a trademark that’s not in use because the United States Patent and Trademark Office (USPTO) requires that you only file for trademarks that are actively used in commerce. Once the USPTO accepts your trademark application based on intent to use, it issues a notice of allowance, after which you must apply for a statement of use for your mark to be converted into a registered trademark.
The Trademark Statement Of Use
The USPTO has various requirements when filing for trademarks to protect your unique logo or business name. And one of these requirements is that you must be actively engaged in selling goods or services for them to grant you trademark rights.
Ideally, a trademark statement of use must be filed within six months from when the USPTO issues the notice of allowance. However, in some cases, it may be impossible to commence commercial activities within that six months, necessitating a trademark filing extension to give you additional time. The statement of use extension gives you another six months to file your statement of use and start using your trademark in selling goods and services, and the USPTO grants a maximum of five extensions.
Now that we’ve covered how trademark filing under an intent-to-use basis and statement of use works, next, we’ll focus on some essential things about the trademark statement of use extension that business owners need to know. These include:
1. Requirements For Filing A Trademark Statement Of Use Extension
While filing for an extension, you must present a valid reason for not actively using your trademark. You can justify your request for an extension by showing that you’ve been engaging in business activities like fundraising for working capital, market research, raw materials sourcing, and scouting for appropriate business premises.
In addition, you need to complete statement of use extension forms and pay processing fees to the USPTO.
2. Failure To Meet The Deadline For Filing Statement Of Use Extension
You should always file for the Statement of Use extension in good time. It’s critical to note that late filing for a statement of use extension can lead to your trademark being considered abandoned, resulting in your request being declined. In addition, inappropriate filing can also lead to USPTO declining your request.
In cases wherein the USPTO considers your trademark as abandoned, you must reapply for your trademark again. This means that you have to go through the filing process one more time and pay the necessary fees again.
Hence, you can minimize the chances of a declined extension request due to a late submission by filing as soon as you receive the notice of allowance.
3. When Your Request For A Statement of Use Extension Is Declined
The USPTO can decline a request for a statement of use extension, especially if it’s inappropriately filed or not backed by valid reasons for not commencing business activities within the six-month period. Some justifications for requesting for a statement of use extension could include setting up your manufacturing plant, creating a distribution channel, marketing, and research.
However, there are cases wherein your request for an extension will be denied, with the USPTO will release an Office Action denying your Extension Request. In such a case, you’ll be granted 30 days to appeal the decision by presenting a verified document that shows a good cause. The USPTO depends on the provisions in the Trademark Manual of Examining Procedure to approve extensions after the lapse of the statutory period.
4. You Can Protect Against Rejection Of Statement Of Use Extension
You can secure additional time for filing a statement of use by double-filing, which means filing the extension of the statement of use concurrently with the statement of use. Double-filing gives you more time to consider your application and ensure it fulfills all USPTO requirements. However, when you opt for double filing, you’ll need to pay additional filing fees that are not refundable even if you don’t require additional time. Filing a request for extension with a statement of use can be an ingenious way of preserving valuable trademarks yet to be used actively in commerce.
Wrapping It Up
If your trademark application is filed under intent-to-use, you must file for a trademark statement of an extension of use. Otherwise, it could be considered abandoned at the expiry of six months. In addition, you must also ensure you meet all the extension requirements by USPTO, including payment of fees and completion of the trademark statement of use extension documents.
If you need to request a trademark extension of use, you must get it right the first time. You’ll need to prove a valid reason, such as waiting for government inspection and approvals when requesting extra time, especially when it’s a subsequent request for an extension. Moreover, working with experienced intellectual property attorneys can help ensure your request for an extension is professionally handled, eliminating the risk of the USPTO declining it.
