The following is an edited transcript of a video entitled, I received a Notice of Allowance, Now what?
Understanding the Notice of Allowance, and what it means, is important for trademark applicants who file an “intent to use” application. An application filed under intent to use that gets approved by the USPTO initially, and then gets published in the public record without any opposition or extension filed, will then be issued what’s called a Notice of Allowance. The Notice of Allowance essentially announces that the application is ready to register as soon as acceptable evidence of use is submitted by the applicant.
The applicant has up to three years from the date of the notice of allowance to submit that acceptable use. However, the chunks of time allotted by the USPTO are in six-month increments, and the applicant need to file extensions if needed. For example, after six months, if you don’t yet have evidence of use in commerce, and you want to continue the application, you have to file an extension to get another six months. The extensions can total up to three years, and the government charges a filing fee ($125 per Class) for each extension.
When you are ready to file evidence of use because the mark is now being used commercially with customers, with the public, the evidence will slightly, depending on whether the application is for goods or for services:
If the mark is for services, the types of use that are generally acceptable are marketing materials or advertising materials, which can easily include a webpage about the service. It could include a brochure. It could sometimes include a business card if it references the service. Say you’re a realtor or an attorney and the business card makes some reference to the actual nature of the work, as well as the trademark of the brand name that would generally be acceptable.
If the application is for use with goods, then the evidence of use will generally need to show the trademark used on the product itself, and that could be on a label or on the packaging. Essentially it needs to be somewhere in physical proximity to the actual good or product itself. There is, however, a type of online specimen that may be acceptable for goods, which is where the goods are being sold online. You have a screenshot that also includes the mechanism to purchase the goods, so a shopping cart button or something of that nature can be acceptable screenshot evidence for goods.
It’s important to know when your deadline is for filing the evidence or when your next deadline is absent an extension. Then when you do file the evidence, one other important thing is that you’re filing a declaration as well, that states that you are using the trademark in connection with all of the goods and services that are still listed in the application. It’s possible to remove some of the goods or services if they are not currently in use. Another element of the filing of the statement of use is also the date that the trademark was first used internally or anywhere, and the date that it was first used in commerce, meaning with the public in sales or in public advertising, once there had been business conducted in connection with the trademark.
The Notice of Allowanceis a wonderful step for an intent to use application, but there are still these important hurdles to clear in order to complete the registration process.