You’ve received a Notice of Allowance for your trademark applications. Congratulations, this is good news! This means your Intent to Use Trademark Application has passed the examination process and has not been rejected.
In this article we will discuss what a Notice of Allowance is, what will be required from you once you receive a Notice of Allowance, and the timetable you must follow for the remainder of your trademark application process.
Notice of Allowance Triggers a Requirement to File a Statement of Use
Proof of use is required in order to complete the trademarking process and obtain the registration. In other words, the Trademark Office will issue the registration until it is being used with the goods or services listed in the trademark application. Evidence of use and a Sworn Statement is Required.
Evidence of Use Is Required
The trademark office requires actual proof that the trademark is being used to sell goods or services listed in the application. If your trademark was for goods, the types of evidence used to meet this requirement include, for example, labels and hang tags. If your trademark was for services, the government will accept other types of proof of use, such as websites and brochures.
More detailed information regarding appropriate evidence of use in commerce is available at the USPTO website.
Trademark Use in Commerce can become a very complex legal topic. Clients of EsquireTrademarks.com benefit from the counseling and experience provided by Trademark Attorney Charles Riddle.
As part of our services, we will work with you to provide an acceptable specimen of use.
Sworn Statement That Mark Is in Use Is Required
In addition to the specimen (proof of use), a sworn statement is also required to in order to satisfy the requirements for the Notice of Allowance.
The sworn statement involves swearing under penalty of perjury the following:
Applicant is the owner of the mark. Sometimes, this will be filed by an employee instead.
The mark is in use in commerce with all the goods/services in the application.
The specimen(s) (evidence discussed above) shows the mark as it actually being used. Essentially, this is checking to see the specimen is not fabricated, photoshopped, or faked.
Nobody else has the right to use the same or similar mark. You are claiming that you are not aware of anyone else using the mark.
The penalty for false statements has 3 components as stated by 18 U.S.C. § 1001. These are a potential fine, imprisonment of up to 5 years, and the voiding or invalidation of the trademark application or resulting registration.
Deadline is 6 Months from Notice of Allowance
The above Evidence of Use and Sworn Statement must be filed within 6 months from the date of the NOA.
Extensions are Available if You Can’t Meet the Above Requirements
If you are NOT yet using the mark in commerce, we can file a six-month extension of time when the initial period expires. You can file 5 total extensions with a total time equaling 36 months from the NOA. After that, a new trademark application must be filed.
The Application Will Go Abandoned if You Miss the Deadline
If you fail to file the NOA, the application will go abandoned, and you may lose rights to the trademark.
If you miss the deadline, you may file a petition to revive the application. The petition must be filed within 2 months from the Notice of Abandonment. An additional government fee is required. Also, with the petition, the SOU or Extension is required to be filed (along with the required government fees for each).
Payment of Government Fee(s)
Extension or SOU also requires payment of fees. The fee for an SOU is currently $100/class. An extension is $125.