TMEP 1108.03: Only One Extension Request May Be Filed with or After a Statement of Use – “Insurance” Extension Request

This is the October 2015 Edition of the TMEP

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1108.03    Only One Extension Request May Be Filed with or After a Statement of Use – “Insurance” Extension Request

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 existing six-month period in which the statement of use was filed, provided that granting the extension request would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). The applicant may not request any further extensions of time after this request. Id.

The purpose of such an extension request, also 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 §1109.16(a) regarding the deficiencies that must be cured before expiration of the statutory filing period, such as specimen issues. Consider the following examples:

Example: If the notice of allowance was issued February 6, 2009, and the applicant files a statement of use on August 6, 2009 (but does not file an “insurance” extension request), the applicant has until August 6, 2009 to cure any deficiency that must be corrected before the expiration of the statutory period for filing the statement of use. After August 6, 2009, it is too late to file an “insurance” extension request, because no time remains in the existing six-month period in which the statement of use was filed.

Example: If the notice of allowance was issued February 6, 2009, the applicant could file a statement of use, together with an “insurance” extension request, on or before August 6, 2009. If the extension request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.

Example: If the notice of allowance was issued February 6, 2009, and the applicant filed a statement of use on February 7, 2009, the applicant could file an “insurance” extension request within the time remaining in the existing six-month period in which the statement of use was filed, i.e., on or before August 6, 2009. If the request were granted, this would give the applicant until February 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.

Example: If the notice of allowance was issued February 6, 2009, and the applicant files a request for an extension of time to file a statement of use on August 6, 2009, the applicant has until February 6, 2010 to file a statement of use or a second extension request. If the applicant files a statement of use, together with an “insurance” extension request, on or before February 6, 2010, and the extension request is granted, the applicant would have until August 6, 2010 to cure any deficiency that must be corrected before the expiration of the statutory filing period. No further extension request may be filed.

An “insurance” extension request filed with or after a 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 valid use of the mark in commerce has been made, 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.

In a multiple-class application, the “insurance” extension request must cover all the classes stated in the notice of allowance. If the applicant intends to submit an “insurance” extension request for less than all the classes, the applicant must either (1) identify in the extension request the classes being deleted or (2) submit a request to divide for those classes that will retain the §1(b) filing basis and a separate extension request for those classes. A request to divide may be filed electronically using TEAS. See TMEP §§1110–1110.11(a) regarding a request to divide an application and TMEP §1110.07 regarding dividing an application when the statement of use is due. If the applicant does not comply with these requirements, the ITU staff will contact the applicant to clarify the deficiencies and process the “insurance” extension request accordingly. If the ITU staff issues a letter regarding the deficiencies and the applicant fails to respond within the time permitted, the “insurance” extension request will not be processed.

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 filings, the USPTO will apply the fees as follows: (1) if there is enough money to cover the extension request, the USPTO 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 USPTO will apply the fees to the statement of use. See TMEP §1110.07 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 “insurance” extension request with a statement of use and the extension request is defective, the ITU staff will deny the request and advise the applicant of the reason for denial. If the statement of use meets the minimum requirements for examination on the merits, the ITU staff will then forward the application to the examining attorney. 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.