TMEP 1108.02(h): Good Cause Required for Extensions Beyond the First Six-Month Extension – Certification Marks

October 2017 Edition of the TMEP

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1108.02(h)    Good Cause Required for Extensions Beyond the First Six-Month Extension – Certification 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. See15 U.S.C. §1051(d)(2)37 C.F.R. §2.89(a), (b)(4), (d). A showing of good cause for a certification mark must include a statement of ongoing efforts to make use of the mark in commerce by authorized users on or in connection with each of the relevant goods or services covered by the extension request. Efforts to use the mark in commerce may include the development of certification standards, steps taken to obtain governmental approval or acquire authorized users, marketing and promoting the recognition of the certification program or of the goods or services that meet the certification standards of the applicant, training authorized users regarding the standards, or other similar activities. 37 C.F.R. §2.89(d)(3). In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted. Id.

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(f) for general information regarding good cause in an extension request for a trademark or service mark and TMEP §1108.02(g) for information regarding good cause in an extension request for a collective mark.