What is an ITU insurance extension request?
An insurance extension request is an optional request for a 6-month extension of time that can be filed in conjunction with a Statement of Use in an Intent-To-Use (ITU) trademark application.
How many insurance extension requests can be filed?
Only one insurance extension request can be filed in a trademark application [see TMEP 1108.03].
Why request an insurance extension?
In a nutshell, your original specimens might be defective and you may not have enough time to come up with new specimens.
An ITU applicant must show use in commerce of the trademark in connection with the goods or services identified in their ITU application. This is accomplished by filing a timely Statement of Use with appropriate specimens of use. If more time is required beyond the original 6-month period afforded by the Notice of Allowance, the applicant can file a request for an extension of time which would extend the deadline by six additional months. A maximum of five extension requests (each for a 6-month increment of time) may be filed, thereby giving the applicant a maximum total of three years (36 months) from the Notice of Allowance date.
The hiccup arises when an examining attorney rejects your originally submitted specimens of use and issues an Office Action. Even though you may have six months to respond to the Office Action, your response must include substitute specimens that were in use as of the prior deadline for your Statement of Use submission.
In other words, you are limited to the original timeframe for coming up with substitute specimens. You cannot submit new specimens that were first used after the expiration of the original timeframe.
But, what if the original submission deadline is about to expire and you have no other specimens? That’s when the insurance extension comes into play – it gives you an additional six months of time to create and use new specimens.
When would an insurance extension be appropriate?
An ITU applicant should consider an insurance extension when the following conditions exist:
- There is a risk that your original specimens might be rejected by the examining attorney;
- You have no backup specimens in use during the relevant timeframe; and
- You are quickly approaching the expiration of the current 6-month period (i.e., less than 1 month away).
Of the three conditions above, the first is the biggest variable because you won’t know whether the specimens are ultimately acceptable until you hear back from the USPTO. Notice that all three factors should exist in order to justify an extension request. For example, if you have several backup specimens already in use during the pertinent time period, then there may be no need for the “insurance” of extra time.
Also, if you’re filing the Statement of Use relatively early in the 6-month period, then you may have enough time within that same 6-month period to:
- receive the examiner’s disapproval of the original specimens;
- prepare new specimens;
- use the new specimens; and
- submit the new specimens.
When is the right time to file an insurance extension request?
The right time to request an insurance extension is when the expiration of the 6-month deadline is quickly approaching. The insurance option is not available if you’ve previously filed five extension requests. The insurance extension request may be filed with or after the filing of the Statement of Use within the same 6-month period.