Additional Filing and Cost Requirements for Intent to Use Trademark Applications


 Before the USPTO will register an Intent-to-Use trademark filed under Section 1(b) filing basis that is based upon a bona fide intention to use the mark in commerce, the owner must:

Note that “an appropriate manner” is different for a trademark (sales of goods) than it is for a service mark (sales of services).


What is an Allegation of Use?

An Allegation of Use is a sworn statement signed by the applicant or a person authorized to sign on behalf of the applicant attesting to use of the mark in commerce. (Since most trademarks are now filed electronically, this is usually an electronic signature.) With the Allegation of Use, the owner must submit:


When do I file an Allegation of Use? During one of the two windows of opportunity.

You may file the Allegation of Use only on or before the day the examining attorney (window 1) approves the mark for publication in the Official Gazette or on or after the day the USPTO (window 2) issues the Notice of Allowance.  

This first window of opportunity (window 1) is on or before the status of the application in the USPTO's TSDR database changes to “Approved for Publication.” An Allegation of Use filed before the mark is approved for publication is called an Amendment to Allege Use (AAU). Note: The USPTO does not inform the applicant directly that the trademark has been Approved for Publication except for the change in status on the TSDR [TARR is no longer used] database.

This second window of opportunity (window 2) is on or after the status of the application in the USPTO's TSDR database changes to “Notice of Allowance.” An Allegation of Use filed after the Notice of Allowance is issued is called a Statement of Use (SOU).

The Amendment to Allege Use (AAU) and the Statement of Use (SOU) include the same information, and differ only as to the time when it is filed. If you file an Allegation of Use between the period after the mark is approved for publication but before the Notice of Allowance is issued (called the “blackout period”), the USPTO will return it (not accept it).


In the above explanation, window 1 is approximately three months if there are no office actions. This is the initial processing time between when the application is filed and when it is “Approved for Publication.” Window 2 is six months plus any additional time that is applied for in an Extension Request.


Is there a deadline for filing the Statement of Use after the Notice of Allowance issues?

Yes. Once the USPTO issues the Notice of Allowance, you have six (6) months to file the Statement of Use. The six-month period runs from the date the USPTO issues the Notice of Allowance, not the date you receive it. If you have not used the mark in commerce, you must file a Request for an Extension of Time to File a Statement of Use (Extension Request) before the end of the six-month period, or the application will be declared "abandoned."


What is a Request for an Extension of Time to file a Statement of Use?

An Extension Request is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner, stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee of $150 per class of goods/services must accompany the Extension Request. The form for filing the Extension Request is available at http://www.uspto.gov/teas/index.html. A sample of the form (not for filing) is found here SAMPLE EXTENSION REQUEST (PDF) .


The Extension Request, if granted, gives the owner an additional six (6) months (computed from the Notice of Allowance date) to either:


You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the date the Notice of Allowance issues. The USPTO will not register a mark if, after thirty-six (36) months of the mailing date of the Notice of Allowance, no Statement of Use has been filed. NOTE: The six-month periods are based solely on the issuance date of the Notice of Allowance (NOA), and NOT from the filing date of any extension; i.e., the six-month period following issuance of the Notice of Allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension.


WARNING USING A STATEMENT OF USE INSTEAD OF AN AMENDMENT TO ALLEGE USE CAN BE RISKY: Unlike with an Amendment to Allege Use filed before an application has been approved for publication [this comes before the mark is Published for Opposition], the applicant may not withdraw a Statement of Use (SOU) filed after a Notice of Allowance has been issued if the SOU fails to meet the statutory requirements. 37 C.F.R. §2.88(g); TMEP 1109.17. However, the applicant may file one “insurance” extension request with the SOU, or afterwards, in the limited situation where time remains in the existing six-month period in which the SOU was filed. This would provide additional time to comply with the statutory requirements for filing the SOU. 37 C.F.R. §2.89(e)(1). See TMEP §§1108.03 and 1109.16(c). Since the SOU cannot be withdrawn, any substitute specimen, if needed, must have been in use in commerce on the same date the original SOU was filed.

[This sounds like a time travel problem. If you knew the first one was flawed, why would you submit it? If you didn’t know the first one was flawed, how would you know to have a second unflawed one ready on the same day in case you later needed it later?]

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