When A Statement of Use Deadline Is Approaching
An Intent-To-Use trademark application allows the applicant to submit evidence of trademark use at a later time. A common situation arises when the deadline for submitting evidence of trademark usage is approaching, and the applicant has not yet used the mark in commerce on all the goods or services idenified in the ITU application. What are the options for an ITU applicant in this situation?
Need to deal with an ITU trademark application? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore working with us.
Options When Trademark Not Used On All Goods/Services
An applicant has the following options when the mark has not yet been used all the goods or services idenfied in an ITU trademark application:
- Delete unused goods/services;
- File a request to divide; or
- File a 6-month extension of time.
Let’s explore when each option might be a better fit for certain situations when a trademark is not yet used on all goods or services.
Option 1: Delete Unused Goods or Services from ITU Application
Certain goods or services identified in an ITU application might not be sold by the trademark applicant in the near future. In cases where the applicant does not want to keep extending deadlines for submitting use evidence, the applicant can submit use evidence for those goods/services in use and delete the unused goods or services might make sense.
Option 2: File Request to Divide
Suppose the ITU applicant does not want to delete any goods or services, but wishes to proceed with submitting use evidence for only certain goods/services by the statement of use deadline. One option is to file a request to divide. Those goods/services not in use will be separated out into a separate application while maintaining the original filing date.
The applicant can proceed with filing use evidence on only those goods or services in use. As a result, the applicant may end up with multiple trademark registrations if acceptable use evidence is eventually submitted for the separated goods/services not yet in use.
Option 3: File Extension of Time to Submit Use Evidence
A Notice of Allowance in an ITU trademark application gives the applicant 6 months to submit use evidence. If more time is desired, each request for an extension of time provides the ITU applicant with an additional 6-month period. In fact, an ITU applicant can keep filing 6-month extension requests for a maximum of three years from the date of the Notice of Allowance.
This extension option is simple and beneficial for ITU applicants who might have used the mark on certain goods/services, but needs more time to use the trademark on the remaining items.
Need Help With Trademark Not Yet Used On All Goods/Services
Our firm has extensive experience in resolving challenging IP situations. Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you get your mark registered.
