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T.M.E.P. § 1108.02
Requirements for Request For An Extension of Time to File a Statement of Use

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1108.02 Requirements for Request For An Extension of Time to File a Statement of Use

First Extension Request

The first request for an extension of time to file a statement of use must include: (1) a written request, before expiration of the six-month period following issuance of the notice of allowance; (2) the prescribed fee for each class of goods or services; and (3) a verified statement signed by the applicant that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. 37 C.F.R. 2.89(a).

Second and Subsequent Extension Requests

A second or subsequent extension request must be submitted before expiration of a previously granted extension of time and must include: (1) a written request; (2) the prescribed fee for each class of goods or services; (3) a verified statement signed by the applicant that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (4) a showing of good cause, as required by 37 C.F.R. 2.89(d). 37 C.F.R. 2.89(b). Extensions of time under 37 C.F.R. 2.89(b) (i.e., second and subsequent extension requests) are granted in six-month increments and may not aggregate more than 24 months. 37 C.F.R. 2.89(c).

1108.02(a) Ownership

The party filing the request for an extension of time to file a statement of use must be the owner of the mark at the time of filing. 15 U.S.C. 1051(d)(2); 37 C.F.R. §§2.89(a)(3) and 2.89(b)(3). If the party filing the extension request is not the owner of record, the request should include a statement that the assignment or other document of title is recorded (or filed for recordation) in the Assignment Services Division of the Office, or other evidence that the party filing the extension request is the owner of the application in accordance with 37 C.F.R. §§3.71 and 3.73. (Note: An application under §1(b) cannot be assigned before the applicant files an allegation of use, except to a successor to the applicant's business, or portion of the business to which the mark pertains. See TMEP §501.01(a).)

If the extension request does not include the necessary evidence, the ITU paralegal will issue an Office action denying the request. If the party who filed the extension request was the owner of the mark at the time of filing, the applicant may submit evidence to establish the chain of title after expiration of the statutory filing period. The response must be filed within the time provided in the Office action advising the applicant of the denial.

To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Services Division, and state that the document has been recorded in the response to the Office action; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, in the form of an affidavit or declaration under 37 C.F.R. 2.20, that a valid transfer of legal title has occurred. 37 C.F.R. 3.73(b)(1); TMEP §502.01. The Office recommends that requests to record documents with the Assignment Services Division be filed through Electronic Trademark Assignment System ("ETAS") at http://etas.uspto.gov.

If the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is time remaining in the statutory filing period. Cf. In re Colombo Inc., 33 USPQ2d 1530 (Comm'r Pats. 1994).

If the applicant notifies the ITU/Divisional Unit during the processing of an extension request that a document has been recorded, the ITU paralegal will change the owner of record in TRAM. See 37 C.F.R. 3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of a new owner, and TMEP §§504 et seq. regarding the circumstances in which the ownership field in the trademark databases will be automatically updated after recordation of a document with the Assignment Services Division, even if the new owner does not notify the Trademark Operation that the document has been recorded.

1108.02(b) Verification

The extension request must be verified by someone properly authorized to sign on behalf of applicant. If the extension request is unsigned (or signed by the wrong party), a substitute verification must be submitted before the expiration of the deadline for filing the statement of use. 37 C.F.R. §§2.89(a)(3) and 2.89(b)(3). See 37 C.F.R. 2.33(a) and TMEP §804.04 regarding the definition of a person properly authorized to sign on behalf of applicant. Generally, the Office will not question the authority of the person who signs a verification, unless there is an inconsistency in the record as to the signatory's authority to sign.

If the extension request is not filed within one year after it is signed, the Office will require a substitute verification or declaration under 37 C.F.R. 2.20 that the applicant still has a bona fide intention to use the mark in commerce. 37 C.F.R. 2.89(h). See TMEP §804.03.

See TMEP §§301 and 804.05 regarding signature of electronically filed documents.

1108.02(c) Filing Fee

A filing fee sufficient to cover at least one class must be submitted within the statutory time for filing the extension request, or the request will be denied. See 37 C.F.R. §§2.89(a)(2) and 2.89(b)(2). In a multiple-class application, if at least one complete fee is filed, the extension request will be provisionally accepted, and the ITU paralegal will issue a notice of fee deficiency allowing the applicant additional time to remit the amount by which the fee was deficient. In re Wolf, 33 USPQ2d 1054 (Comm'r Pats. 1993). If the Office does not receive a timely response to a fee deficiency letter, the Office will apply the fees paid to the lowest numbered classes in ascending order, unless the applicant has expressly abandoned a specific unpaid-for class, and will delete the goods in the higher classes from the application.

If the filing fee for at least a single class is not submitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the fee for at least one class of goods or services must be submitted before the expiration of the statutory filing period. If the extension request was not accompanied by an authorization to charge deficient fees to a deposit account (37 C.F.R. 2.208) that has sufficient funds to cover the fee, and the fee is not resubmitted before expiration of the statutory deadline, the extension request will be denied and the application will be abandoned. 37 C.F.R. §§2.89(a)(2) and (b)(2). In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. 2.6(b)(12). See TMEP §405.06 regarding payments that are refused.

1108.02(d) Identification of Goods or Services

The goods/services on or in connection with which the applicant still has a bona fide intention to use the mark in commerce must be identified in an extension request. 15 U.S.C. 1051(d)(2); 37 C.F.R. §§2.89(a)(3) and (b)(3). The goods/services identified in the extension request must conform to those identified in the notice of allowance. 37 C.F.R. 2.89(f). If goods or services are to be deleted, the applicant should clearly specify those goods and services to be deleted.

The applicant may incorporate by reference the specification of goods/services in the notice of allowance. This is advisable, in order to avoid the possibility that goods or services will be deleted unintentionally. Thus, the applicant may specify the goods/services by stating "those goods/services identified in the notice of allowance" or "those goods/services identified in the notice of allowance except... [followed by a listing of the goods/services to be deleted]."

If the applicant lists the goods/services specifically in the request for an extension of time, and omits any goods or services that were listed in the notice of allowance, the Office will presume these goods/services to be deleted. The applicant may not thereafter request that the goods/services be reinserted in the application. 37 C.F.R. 2.89(f).

If an applicant files an extension request on a form provided by the Office and fails to check either of the boxes available for identifying the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU paralegal will assume that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with all the goods/services identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. 1051(d)(2) and 37 C.F.R. 2.89. In re Omega-3 Marketing Inc., 35 USPQ2d 1158 (Comm'r Pats. 1994).

If the applicant lists goods/services to be deleted and the result would be to delete all of the goods/services in the notice of allowance, the Office will presume this was a typographical error. Applicant will be allowed to correct the mistake. However, if by mistake the applicant lists goods/services to be deleted and removal does not result in the deletion of all goods/services, the goods/services specifically listed will be deleted and may not later be reinserted.

See TMEP §1107 regarding amendments to the identification of goods/services filed between the issuance of the notice of allowance and the filing date of the statement of use.

1108.02(e) Bona Fide Intention to Use the Mark in Commerce

A request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with the goods/services identified in the notice of allowance. 37 C.F.R. §§2.89(a)(3) and (b)(3). This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request. In re Custom Technologies Inc., 24 USPQ2d 1712 (Comm'r Pats. 1991); In re Raychem Corp., 20 USPQ2d 1355 (Comm'r Pats. 1991).

The Office will accept an allegation of actual use in commerce as meeting the requirement for an allegation of bona fide intention to use the mark in commerce in an extension request. In re Vitamin Beverage Corp., 37 USPQ2d 1537 (Comm'r Pats. 1995).

See TMEP §1101 for additional information about the requirement for an allegation of the applicant's bona fide intention to use the mark in commerce.

1108.02(f) Good Cause Required for Extensions Beyond the First Six-Month Extension

No showing of good cause is required in the first request for an extension of time to file a statement of use. However, each subsequent extension request must include a showing of good cause. 15 U.S.C. 1051(d)(2); 37 C.F.R. 2.89(b)(4). The showing of good cause must include a statement of the applicant's ongoing efforts to make use of the mark in commerce on or in connection with each of the goods/services covered by the extension request. Efforts to use the mark in commerce may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities. In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. 37 C.F.R. 2.89(d).

A mere assertion that the applicant is engaged in ongoing efforts is not enough; the efforts must be specified. In re Comdial Corp., 32 USPQ2d 1863 (Comm'r Pats. 1993). However, the Office will not require a detailed explanation or evidence in a showing of good cause. The statement concerning good cause only has to refer to the types of activities listed in the rule or similar types of activities. For example, the applicant may simply state that the applicant is engaged in manufacturing and promotional activities.

The applicant may satisfy the requirement for a showing of good cause by asserting that the applicant believes that it has made valid use of the mark in commerce, and is in the process of preparing (or is concurrently filing) a statement of use, but that if the statement of use is found by the Office to be fatally defective, the applicant will need additional time to file a new statement of use. However, such a statement will be accepted only once as a statement of the applicant's ongoing efforts to make use the mark in commerce. Repetition of these same allegations in a subsequent extension request is not, without more, deemed to be a statement of the applicant's ongoing efforts, as required by 37 C.F.R. 2.89(d). In re SPARC International Inc., 33 USPQ2d 1479 (Comm'r Pats. 1993).

If an extension request does not include a showing of good cause, or if the showing of good cause in an extension request is deemed insufficient, the ITU paralegal will issue an Office action denying the extension request but granting the applicant additional time to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause). In re El Taurino Restaurant, Inc., 41 USPQ2d 1220 (Comm'r Pats. 1996).