T.M.E.P. § 1108.03
Only One Extension Request May Be Filed With or After 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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1108.03 Only One Extension Request May Be Filed With or After a Statement of Use

An applicant may file a request for an extension of time to file a statement of use with a statement of use, or after filing the statement of use if there is time remaining in the statutory period for filing the statement of use, provided that granting the extension request would not extend the time for filing the statement of use more than thirty-six months after the issuance of the notice of allowance. The applicant may not request any further extensions of time after this request. 37 C.F.R. 2.89(e)(1).

The purpose of such a request (sometimes called an "insurance" extension request) is to secure additional time to correct any deficiency in the statement of use that must be corrected before the expiration of the deadline for filing the statement of use. See TMEP §§1109.01 and 1109.16(a) regarding the deficiencies that must be cured before expiration of the statutory filing period. Consider the following examples:

Example: If the notice of allowance was issued February 6, 2004, and the applicant filed the statement of use on August 6, 2004 (but did not file an extension request), the applicant has only until August 6, 2004 to cure any deficiency that must be corrected before the expiration of the statutory period for filing the statement of use.

Example: If the notice of allowance was issued February 6, 2004, the applicant could file a statement of use, together with an "insurance" request for an extension of time to file a statement of use, on or before August 6, 2004. If the extension request were granted, this would give the applicant until February 6, 2005 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request(s) could be filed.

Example: If the notice of allowance was issued February 6, 2004, and the applicant filed a statement of use on February 7, 2004, the applicant could file an "insurance" extension request on or before August 6, 2004. If the request were granted, this would give the applicant until February 6, 2005 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request(s) could be filed.

An extension request filed with a statement of use (or after the filing of the statement of use) must meet all relevant requirements including payment of the applicable fee. If the request is not the first request for an extension of time, and thus a showing of good cause is required, 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, as evidenced by the statement of use, but that if the statement of use is found to be fatally defective, the applicant will need additional time to correct defects or file a substitute statement of use. 37 C.F.R. 2.89(e)(2); TMEP §1108.02(f).

The filing fee for the "insurance" extension request will not be refunded, even if the extension is not needed to perfect the statement of use.

If the applicant files an insurance extension request in conjunction with a statement of use, and the applicant submits fees sufficient for one but not both, the Office will apply the fees as follows: (1) if there is enough money to cover the extension request, the Office will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the Office will apply the fees to the statement of use. See TMEP §1110.04 regarding the application of fees when an applicant submits a request to divide along with an extension request and statement of use.

If an applicant files an extension request with a statement of use and the extension request is defective, the ITU paralegal will deny the request and will advise the applicant of the reason for denial. The paralegal will then forward the file to the examining attorney if the statement of use meets the minimum requirements for examination on the merits. If there is time remaining in the current period for filing a statement of use, the applicant may file a substitute extension request.

See TMEP §1108.03(a) regarding the processing of an extension request after a statement of use has been referred to an examining attorney.

1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney

Under 37 C.F.R. 2.89(e)(1), an applicant may file a request for an extension of time to file a statement of use after filing a statement of use if there is time remaining in the statutory period for filing the statement of use, provided that granting the extension request would not extend the time for filing the statement of use more than thirty-six months after the issuance of the notice of allowance. See TMEP §1108.03.

When an extension request is filed after the statement of use has been referred to the examining attorney, the request will be referred to the examining attorney. The Office will not examine the extension request unless the applicant needs the extension to perfect the statement of use.

If the examining attorney issues a requirement or refusal based on the statement of use, the examining attorney should note in the Office action that the extension request is being referred to the ITU Unit for processing of the extension request. If the examining attorney does not issue a requirement or refusal based on the statement of use, the Office will not take formal action on the extension request.

The Office will not refund the filing fee for the extension request, even if the extension is not needed to perfect the statement of use.

Filing an extension request does not extend the time for responding to an examining attorney's Office action. See TMEP §1109.16(d).