1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Statutory Filing Requirements
In limited circumstances, an applicant may file a request for an extension of time to file a statement of use after filing a statement of use, in order to gain more time to comply with the statutory requirements for filing the statement of use (sometimes called an “insurance” extension request). An applicant may file an extension request after filing a statement of use only if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension 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). See TMEP §1108.03 regarding the time periods and requirements for filing an “insurance” extension request, and TMEP §1108.03(a) regarding the procedures for processing such a request.
The filing of an “insurance” extension request is not in itself a proper response to an Office action, and does not extend the six-month period for response to the Office action. See TMEP §1109.16(d).
Example: Assume that a notice of allowance issues July 3, 2009, the applicant files a statement of use on July 22, 2009, and the examining attorney issues an Office action requiring substitute specimens on August 6, 2009. The applicant may file an “insurance” extension request on or before January 3, 2010, which would give the applicant until July 3, 2010 to make proper use of the mark. However, the applicant must file a response to the Office action on or before February 6, 2010. See TMEP §1109.16(d) for information about responding to an Office action in this situation.