Navigating the Statement of Use Extension: A Guide for U.S. Trademark Applicants

For applicants filing a U.S. trademark application based on an intent-to-use basis under Section 1(b) of the Lanham Act, the Notice of Allowance (NOA) marks a pivotal milestone. However, it also initiates a critical countdown. If you are not yet using your mark in commerce across all listed goods or services by the deadline, you must formally request additional time. This is where the Request for an Extension of Time to File a Statement of Use (Extension Request) becomes essential.

1.What is a Statement of Use Extension?

An Extension Request is a formal petition to the USPTO for additional time to file a Statement of Use—a sworn declaration with proof-of-use specimens showing active trademark use in commerce for all applied-for goods/services. This statutory safeguard preserves your application’s validity when the initial six-month deadline cannot be met, accommodating the practical timelines of product development and market launch.

2.When is the Deadline to File a Statement of Use Extension?

The deadlines are strict and sequential:

Initial SOU Deadline: You have six months from the issue date of the Notice of Allowance to file a complete Statement of Use.

First Extension Deadline: If you cannot file the SOU within that initial six-month period, you must file your first Extension Request on or before the six-month deadline expires.

Subsequent Extensions: Each granted extension provides an additional six-month period. You may file a maximum of five Extension Requests.

Final Absolute Deadline: Consequently, from the NOA issue date, you have a total of 36 months (6 months + five 6-month extensions) to commence use and file your SOU. Failure to file either an SOU or a subsequent Extension Request by the end of any deadline period will result in the abandonment of your application.

3.Should I File for a Statement of Use Extension of Time?

Please request an extension if you meet the following criteria:

Ongoing Product Development: Your goods are still in the prototype, manufacturing, or regulatory approval phase.

Market Launch Preparation: You are finalizing packaging, establishing distribution channels, or building inventory for a commercial launch.

Services Not Yet Offered: Your business plan or platform for the listed services is not yet operational.

Need for Additional Time is Bona Fide: You are actively pursuing use and require more time to execute your commercial plans in good faith.

Consult a U.S.-Licensed Trademark Attorney: An attorney can not only ensure timely filing but also advise on strategic options, such as dividing your application or refining the identification of goods/services to align with your actual use, thereby minimizing the need for multiple extensions.

You can check Our Packages for Statement of Use or Extension by THIS LINK.