How does an insurance extension solve a common predicament in ITU trademark applications?

In an Intent-To-Use (ITU) trademark application that has been allowed, an applicant will have a deadline to submit evidence of trademark usage by filing a Statement of Use. Often times, an applicant will file the Statement of Use close to the expiration of the 6-month time period for doing so. Filing the use evidence so close to the deadline can lead to the predicament where the applicant will not know if submitted specimens will be accepted until after the deadline has passed. An insurance extension request provides an ITU applicant with more time to create and use new specimens in case the original specimens are rejected.

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 an ITU application, the applicant must eventually show use of the mark on the goods or services. A timely Statement of Use is required with appropriate specimens of use. If more time is required beyond the 6-month period afforded by the Notice of Allowance, the applicant can file a request for a 6-month extension of time. A maximum of five extension requests (each for a 6-month period) may be filed. So an applicant has a maximum total of three years (36 months) from the Notice of Allowance date to submit use evidence.

The hiccup arises when an examining attorney rejects your originally submitted specimens 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 before the Statement of Use deadline. In other words, you are limited to the original timeframe for creating and using new specimens. You cannot submit new specimens that were first used after the expiration of the original timeframe.

The problem is that you might not receive the rejection decision by the examining attorney until after your use deadline has passed. This can leave you in a bind where you do not have enough time to come up with new specimens that must then be put to use.

An insurance extension buys more time to create and use new specimens. It’s not enough to create new specimens without using them. You must use those new specimens. For example, if your new specimens consist of packaging for your product, you must actually ship goods with the new packaging. Simply creating new specimens (which might be quicker and easier) is not enough.

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 make sense?

An ITU applicant should consider an insurance extension when the following conditions exist:

  1. A higher risk of your original specimens being rejected by the examining attorney (e.g., few specimens);
  2. No backup specimens that were in use prior to the use deadline; and
  3. Current 6-month use deadline quickly approaching (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.

Filing the Statement of Use relatively early in the 6-month period may give you may more 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.

What are the risks of not filing an insurance extension?

If you choose not to file an insurance extension, your trademark application may be deemed abandoned under the following perfect storm of circumstances:

  • your original specimens are rejected;
  • you do not have any substitute specimens that were in use prior to the expiration of your use deadline; and
  • there is not enough time remaining in the use deadline to create and use new specimens.

When is the right time to file an insurance extension request?

The right time to request an insurance extension is when the 6-month deadline is quickly approaching. The insurance option is not available if five extensions have previously been requested. An insurance extension request may be filed with or after the filing of the Statement of Use within the same 6-month period.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com