1108.02   Requirements for Request for an Extension of Time to File a Statement of Use

First Extension Request

The first request for an extension of time to file a statement of use must include:  (1) a written extension request from the applicant, before expiration of the six-month period following issuance of the notice of allowance; (2) the prescribed fee for each class of goods/services; and (3) a verified statement signed by the applicant or a person properly authorized to sign on behalf of the applicant (TMEP §804) that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce.  37 C.F.R. §2.89(a).

Second and Subsequent Extension Requests

A second or subsequent extension request must be submitted before expiration of a previously granted extension of time and must include:  (1) a written extension request from the applicant; (2) the prescribed fee for each class of goods/services; (3) a verified statement signed by the applicant or a person properly authorized to sign on behalf of the applicant that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (4) a showing of good cause, as required by 37 C.F.R. §2.89(d).  37 C.F.R. §2.89(b).  Extensions of time under 37 C.F.R. §2.89(b) (i.e., second and subsequent extension requests) are granted in six-month increments and may not aggregate more than 24 months.  37 C.F.R. §2.89(c).

1108.02(a)   Ownership

The party filing the extension request must be the owner of the application, i.e., the person or entity who is entitled to use the mark, at the time of filing.  See 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3), 2.89(b)(3).  If the party filing the extension request is not the owner of record, the request should include either a statement that the assignment or other document of title is recorded (or filed for recordation) in the Assignment Recordation Branch of the USPTO, or other evidence that the party filing the extension request is the owner of the application in accordance with 37 C.F.R. §§3.71(d) and 3.73(b).  (Note:  An application under §1(b) cannot be assigned before the applicant files an allegation of use, except to a successor to the applicant’s business, or portion of the business to which the mark pertains.  See TMEP §501.01(a).)

If the extension request is filed by someone other than the owner of record and does not include the necessary evidence of ownership, the ITU staff will issue an Office action denying the request.  If the party who filed the extension request was the owner at the time of filing, the applicant may submit evidence to establish the chain of title after expiration of the statutory filing period, within the time provided in the Office action advising the applicant of the denial.

To establish ownership, the new owner must either:  (1) record an assignment or other document of title with the Assignment Recordation Branch, and state in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, supported by an affidavit or declaration under 37 C.F.R. §2.20 that a valid transfer of legal title has occurred.  37 C.F.R. §3.73(b)(1); TMEP §502.01.  The USPTO recommends that requests to record documents with the Assignment Recordation Branch be filed through Electronic Trademark Assignment System ("ETAS") at http://etas.uspto.gov.

If an extension request is filed by the owner, but there is a minor error in the manner in which the name of the owner is set out, the mistake may be corrected by amendment.  See TMEP §1201.02(c) for examples of correctable and non-correctable errors.

If the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is time remaining in the statutory period for filing the extension request.  Cf. In re Colombo Inc., 33 USPQ2d 1530, 1531 (Comm’r Pats. 1994) (indicating that a statement of use filed by the wrong party cannot be corrected with a properly signed verification unless it is submitted within the statutory period for filing the statement of use).  See TMEP §1108.05 for applicant's recourse if an extension request is denied.

If the applicant notifies the ITU/Divisional Unit during the processing of an extension request that an assignment or other document of title has been recorded, and there is a clear chain of title, the ITU staff will update the owner of record in the Trademark database.  See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of a new owner, and TMEP §504 regarding the circumstances in which the "Ownership" field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.

1108.02(b)   Verification  

The extension request must be verified by someone properly authorized to sign on behalf of applicant.  If the extension request is unsigned or signed by the wrong party, a properly signed substitute verification must be submitted before the expiration of the deadline for filing the statement of use.  37 C.F.R. §§2.89(a)(3), 2.89(b)(3).  See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) regarding persons properly authorized to sign on behalf of applicant.  Generally, the USPTO will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.

If the extension request is not filed within one year after it is signed, the USPTO will require a substitute verification or declaration under 37 C.F.R. §2.20 that the applicant still has a bona fide intention to use the mark in commerce.  37 C.F.R. §2.89(h);  see TMEP §804.03.

See TMEP §611 regarding signature on correspondence filed with the USPTO.

1108.02(c)   Filing Fees

A filing fee sufficient to cover at least one class must be submitted within the statutory time for filing the extension request, or the request will be denied.  37 C.F.R. §§2.89(a)(2), 2.89(b)(2). In a multiple-class application, if the applicant files a fee sufficient to pay for at least one class, but insufficient to cover all the classes, the ITU staff will issue a notice of fee deficiency allowing the applicant thirty days to remit the amount by which the fee is deficient or specify the class(es) to be abandoned.  If the USPTO does not receive a timely response to a fee deficiency letter, the USPTO will apply the fees paid to the lowest-numbered class(es) in ascending order, and will delete from the application the remaining class(es) of goods/services not covered by the submitted fees.  See 37 C.F.R. §§2.89(a)(2), 2.89(b)(2).

If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the fee for at least one class of goods/services must be submitted before the expiration of the statutory filing period.  See 37 C.F.R. §§2.89(a)(2), 2.89(b)(2). If the extension request was not accompanied by an authorization to charge deficient fee(s) to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, and the applicant does not resubmit the fee before expiration of the statutory deadline, the extension request will be denied and the application will be abandoned.  See 37 C.F.R. §§2.89(a)(2), 2.89(b)(2).  In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(12).  See TMEP §405.06 regarding payments that are refused.

1108.02(d)   Identification of Goods/Services

The applicant must identify or reference the goods/services on or in connection with which the applicant still has a bona fide intention to use the mark in commerce in the extension request.  15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3), 2.89(b)(3).  The goods/services identified in the extension request must conform to those identified in the notice of allowance.  37 C.F.R. §2.89(f).  If the applicant wants to delete goods/services from the application, the applicant should clearly specify those goods/services to be deleted.

The applicant may incorporate by reference the goods/services listed in the notice of allowance.  See 37 C.F.R. §2.89(f). This is advisable where applicant intends to retain all the goods/services identified in the notice of allowance, to avoid the possibility that goods/services may be inadvertently omitted.  Thus, the applicant may specify the goods/services by referring to "those goods/services identified in the notice of allowance" or "those goods/services identified in the notice of allowance except . . . [followed by a listing of the goods/services to be deleted]." Id.

If the applicant lists the goods/services with specificity in the extension request, and omits any goods/services that were listed in the notice of allowance, the USPTO will presume these goods/services to be deleted.  37 C.F.R. §2.89(f). The applicant may not thereafter request that the goods/services be reinserted in the application.  Id.  In this situation, the applicant cannot file a petition under 37 C.F.R. §2.66, claiming unintentional delay in filing an extension request for the omitted goods/services.

If an applicant files an extension request on a pre-printed paper form provided by the USPTO and fails to check either of the boxes available for identifying the goods/services on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce, the ITU staff will assume that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with all the goods/services identified in the notice of allowance, and will grant the extension request, if it meets all other requirements of 15 U.S.C. §1051(d)(2) and 37 C.F.R. §2.89.  In re Omega-3 Mktg., Inc., 35 USPQ2d 1158, 1159 (Comm’r Pats. 1994).

If the applicant lists goods/services to be deleted and the result would be to delete all of the goods/services in the notice of allowance, or if the applicant fails to identify or incorporate by reference any goods/services, the USPTO will presume this was a clerical error.  Applicant will be allowed to correct the mistake.  The ITU staff will issue a letter noting that no goods/services were specified or incorporated by reference in the extension request, and granting applicant thirty days in which to submit a verified statement clarifying the goods/services.  However, if by mistake the applicant lists goods/services to be deleted and removal does not result in the deletion of all goods/services, the goods/services specifically listed will be deleted and may not later be reinserted.

See TMEP §1107 regarding amendments to the identification of goods/services filed between the issuance of the notice of allowance and the filing date of the statement of use.

1108.02(e)   Bona Fide Intention to Use the Mark in Commerce  

A request for an extension of time to file a statement of use must include a verified statement that the applicant has a continued bona fide intention to use the mark in commerce on or in connection with the goods/services identified in the notice of allowance.  37 C.F.R. §2.89(a)(3), 2.89 (b)(3).  This is a statutory requirement that must be satisfied before expiration of the statutory period for filing the extension request.  15 U.S.C. §1051(d)(2). In re Custom Techs., Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991).

The USPTO will accept an allegation of actual use in commerce as meeting the requirement for an allegation of bona fide intention to use the mark in commerce in an extension request.  In re Vitamin Beverage Corp., 37 USPQ2d 1537, 1539 (Comm’r Pats. 1995).

See TMEP §1101 for additional information about the requirement for an allegation of the applicant’s bona fide intention to use the mark in commerce.

1108.02(f)   Good Cause Required for Extensions Beyond the First Six-Month Extension

No showing of good cause is required in the first request for an extension of time to file a statement of use, but each subsequent extension request must include a showing of good cause.  See 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a), 2.89(b)(4), 2.89(d).  The showing of good cause must include a statement of the applicant’s ongoing efforts to make use of the mark in commerce on or in connection with each of the goods/services covered by the extension request. 37 C.F.R. §2.89(d).  Efforts to use the mark in commerce may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain required governmental approval, or other similar activities, such as efforts to secure funding.  Id. In the alternative, a satisfactory explanation for the failure to make such efforts may be submitted.  Id. Examples of activities that would not be acceptable to show good cause include physical illness or disability and lack of staff and resources due to economic downturn.

A mere assertion that the applicant is engaged in ongoing efforts is not enough; the efforts must be specified.  In re Comdial Corp., 32 USPQ2d 1863, 1864 (Comm’r Pats. 1993).  However, the USPTO will not require a detailed explanation or evidence in a showing of good cause.  The statement concerning good cause only has to refer to the types of activities listed in the rule or similar types of activities.  For example, the applicant may simply state that the applicant is engaged in manufacturing and promotional activities.

The applicant may also satisfy the requirement for a showing of good cause by asserting that the applicant believes it has made valid use of the mark in commerce and (1) is in the process of preparing a statement of use but may need additional time to file it, or (2) is concurrently filing a statement of use but is requesting the extension of time to file a statement of use in case the USPTO finds the original statement of use to be fatally defective.  However, such a statement will be accepted only once as a statement of the applicant’s ongoing efforts to make use of the mark in commerce.  Repetition of these same allegations in a subsequent extension request is not, without more, deemed to be a statement of the applicant’s ongoing efforts, as required by 37 C.F.R. §2.89(d).  In re SPARC Int’l Inc., 33 USPQ2d 1479, 1480 (Comm’r Pats. 1993), partially overruled on other grounds, by In re El Taurino Rest., Inc., 41 USPQ2d 1220 (Comm'r Pats. 1996).  If these allegations are repeated, the extension request will be denied.

If an extension request does not include a showing of good cause, or if the showing of good cause in an extension request is deemed insufficient, the ITU staff will issue an Office action denying the extension request but granting the applicant thirty days to overcome the denial by submitting a verified showing of good cause (or a substitute extension request that includes a showing of good cause).  This showing may be submitted even if the statutory period for filing the statement of use has expired.