TMEP 1108.02(f): Good Cause Required for Extensions Beyond the First Six-Month Extension –Trademarks and Service Marks

This is the October 2015 Edition of the TMEP

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1108.02(f)    Good Cause Required for Extensions Beyond the First Six-Month Extension –Trademarks and Service Marks

No showing of good cause is required in a first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause. See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(a), (b)(4), (d). A showing of good cause for a trademark or service mark 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. 37 C.F.R. §2.89(d). 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, such as efforts to secure funding. Id. In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. Id. Examples of activities that would not be acceptable to show good cause include physical illness or disability and lack of staff and resources due to economic downturn.

A mere assertion that the applicant is engaged in ongoing efforts is not sufficient; the efforts must be specified. In re Comdial Corp., 32 USPQ2d 1863, 1864 (Comm’r Pats. 1993). However, the USPTO will not require a detailed explanation or evidence in a showing of good cause. The statement concerning good cause should refer to the types of activities listed in the rule or other similar types of activities. For example, the applicant may simply state that the applicant is engaged in manufacturing and promotional activities.

The applicant may also satisfy the requirement for a showing of good cause by asserting that the applicant believes it has made valid use of the mark in commerce and (1) is in the process of preparing a statement of use but may need additional time to file it, or (2) is concurrently filing a statement of use but is requesting the extension of time to file a statement of use in case the USPTO finds the original statement of use to be fatally defective. However, such a statement will be accepted only once as a statement of the applicant’s ongoing efforts to make use of 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 Int’l Inc., 33 USPQ2d 1479, 1480 (Comm’r Pats. 1993). If these allegations are repeated, the extension request will be denied.

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 staff will issue an Office action denying the extension request but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause). This showing may be submitted even if the statutory period for filing the statement of use has expired.

See TMEP §1108.02(g) for information regarding good cause in an extension request for a collective mark and TMEP §1108.02(h) for information regarding good cause in an extension request for a certification mark.