I Filed an “Intent to Use” Trademark Application, Now What?
You were on top of the ball, you wanted to protect rights to a “mark” you were intending to use. You filed a trademark application with the United States Patent and Trademark Office (USPTO) under section 1(b), intent to use. Now you are stuck wondering how to proceed. The following article will walk you through the steps that you need to take from this point.
At this point, the status of your application will be in one of the following three stages:
- pending approval from the examining attorney,
- approved for publication in the Office Gazette, but have not received a Notice of Allowance (NOA), or
- approved for publication and have received a Notice of Allowance.
If the status of your trademark application is currently in stage one (1), and you have begun to use the ‘mark’ in commerce, you are ready to proceed with filing an “Amendment to Allege Use” form.
If the status of your trademark application is currently in stage two (2), and you have begun to use the ‘mark’ in commerce, you are in what is known as a black out period. During this time, you are un-able to submit any documents to the USPTO, simply wait until your application moves into stage 3. This will happen approximately twelve (12) weeks after publication to the Office Gazette.
If the status of your trademark application is currently in stage three (3), and you have begun to use the ‘mark’ in commerce, you are ready to proceed with filing a “Statement of Use” form.
The “Amendment to Allege Use” and “Statement of Use” forms are actually the same form. The name used is dependent on the stage of your application. The ‘live’ form and a preview of the form can be found at the following link: http://www.uspto.gov/trademarks/teas/intent_to_use.jsp This form is relatively simple to fill out and the major components include the date of first use, specimens (pictures) of the ‘mark’ in actual use, and a description of the specimens.
Finally, let us not forget the last possible scenario. You submitted your trademark application and it is in one of the three stages listed above, but you have not started using the ‘mark’ in commerce. If you are in this situation and you still intend to use the ‘mark’ in commerce you will be able request for an extension of time to file a statement of use. You do not need to worry about this form until you have reached stage three (3) listed above.
You have six months from the NOA to submit either a statement of use or a request for extension of time form. A request to extend the time to file the ‘statement of use’ form for an additional six (6) months gives you an additional six months from the initial deadline. It is important to realize the six (6) month extension is not from the time a request was submitted, but is added on to the original deadline. A total of five (5) ‘requests for extension of time to file a statement of use’ forms may be submitted, giving you a total of three (3) years to file a ‘Statement of Use’ form from the date of the NOA. This form may be found at the following link, under number 2: http://www.uspto.gov/trademarks/teas/intent_to_use.jsp