You might remember from our “How Much Use Equals ‘Use’?” post that the USPTO can be picky when it comes to accepting proof that a brand is in use (and, of course, when we say “use,” we mean that special kind of “trademark use” that the USPTO is looking for – i.e., use of a brand in connection with products or services offered in commerce).
Luckily, owners of trademark applications based on proposed use have some time to develop and submit proof of use. After an initial 6-month period, a trademark owner may request up to five 6-month extensions before it has to file proof that its brand is in use (that’s a total of three years!). Of course, while taking advantage of these extensions might be helpful in some cases, the faster a trademark owner can submit an acceptable example of use, the faster its application can proceed to registration.
You might be thinking: “I’m using my brand – but am I using it in a way that meets all of the USPTO’s strict criteria?” If you’re not sure, you could file an “insurance” extension request along with your proof of use. An “insurance” extension request provides trademark owners with six additional months to submit new proof of use, if needed.
Example B below shows how a trademark owner can use an “insurance” extension request to its advantage:
Example A: A US trademark application is allowed on January 1, 2017. A trademark owner submits evidence of use on July 1, 2017. The USPTO rejects the evidence of use on July 30, 2017. In some cases, the application may lapse unless the trademark owner can convince the USPTO to accept the original evidence of use.
Example B: The application is allowed on January 1, 2017. A trademark owner submits evidence of use on July 1, 2017, and also files an “insurance” extension request. The USPTO rejects the evidence of use on July 30, 2017. Because it filed an “insurance” extension request, the trademark owner has until January 1, 2018 to file entirely new evidence of use.
And there you have it – one way to gain a few extra valuable months when finding and submitting proof of use. This can make the difference between maintaining an existing application or having to start the application process all over again.
A few pointers when considering whether to file an “insurance” extension request:
Timing: Only one “insurance” extension request may be filed per application, and it must be submitted in the same 6-month period as the proposed example of use. Once an “insurance” extension is requested, the trademark owner cannot request any further extensions of time. Filing an “insurance” extension request also can’t extend the time allotted for the trademark owner to file evidence of use by more than three years.
Additional Fees: Submitting an “insurance” extension request requires additional filing fees.
Office Actions: Filing an “insurance” extension request alone is not a sufficient response to an Office action, or rejection of evidence, from the USPTO. It also doesn’t extend the deadline to respond to the Office action.
Not sure an “insurance” request is right for you? Might be a good time to ask a trademark attorney to lend a hand!