Insurance Extension Requests in Section 1(b) Trademark Applications

When an Section 1(b) intent-to-use trademark application receives a Notice of Allowance, the applicant has six months to file an acceptable statement of use to prove that the applied-for mark is being used in commerce. Applicants that fail to file by the six-month deadline can request a six-month extension, and indeed, can continually file those requests extending the time for a statement of use out to a maximum of three years from the Notice of Allowance.

A statement of use can be filed anytime during a currently pending six-month period. However, any corrections to a filed statement of use must also be filed within that six-month period or within an extension period following afterward (if available – an extension period can’t extend past the 3-year mark). Applicants place themselves in risky situations when they file on the last day of the six-month period or close to the last day of a six-month period – if anything goes wrong, it will likely be impossible to correct the deficiency within the period.

To dampen that risk, an “insurance extension request” can be filed. An insurance extension request is a hedge against your statement of use. If the request granted, the extension provides you with an extra six months to correct any problems with your statement of use.

Why would you file an insurance extension request, especially there are filing fees associated with it that might be forfeited if you don’t need it? Well, there is a certain amount of processing time in the Trademark Office. It is highly unlikely that a statement of use will be evaluated and accepted or rejected the same day it is filed. The statement of use is first assigned to ITU staff and is then forwarded to the Trademark Examiner assigned to the application. This can take often take a week or two. If you file a statement of use one or two days before it is due, there is little chance that the filing will even land on the Trademark Examiner’s desk before that deadline has already passed. If the statement of use is acceptable, that’s fine. But if the specimen doesn’t show the mark quite right, or the Examiner thinks that the goods shown in the specimen are different from the goods identified in the application, there may be a problem that can’t be cured. So there is a chance that you will lose out the $100 / class fee for the insurance extension request, but failing to file one could cost you the application if there are problems in the statement of use.

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