“Laughter is the best medicine, but your insurance only covers chuckles, snickers and giggles.”

We’ve all been there. Whether it’s buying AppleCare or upgrading insurance on your rental car, odds are you feel very strongly about whether additional insurance is worth it or not.

But… if you’ll give us a few moments of your time, we’d like to talk to you about trademark extension insurance. Seriously. We promise to keep this brief and not to call you during dinner, but an “insurance” extension is actually a serious consideration when filing an Intent to Use trademark application, and we really would like to discuss it.

So, what is this “insurance” extension? According to the USPTO, the purpose of an “insurance” extension “is to secure additional time to correct any deficiency in the statement of use that must be corrected before the expiration of the deadline for filing the statement of use.”

In plain English, if you filed a new application as Intent to Use, you must file a Statement of Use once you begin using the applied-for trademark in commerce (i.e. selling stuff). This shows the proof that you are using the trademark for the goods or services (those same ones you said you had an “intent to use” in your trademark application).  If you have applied for a trademark before, you know that there is often a somewhat murky line between which specimens (samples showing use) are deemed acceptable and which are not.

An “insurance” extension gives you additional time just in case your specimen is rejected.

Worst case scenario: you apply for a new trademark as Intent to Use.  The application is accepted and the USPTO issues a Notice of Allowance, giving you six months to produce and submit a specimen or file an extension request.  You file the Statement of Use and the USPTO examining attorney issues an Office Action stating that the specimen submitted does not show use (this can happen for any number of reasons and ultimately relies on the personal judgement of the examiner).  You now have six months to respond to the Office Action and submit a new specimen. But here’s the catch.  If you take only one thing away from this article, let it be this:  even though you have six months to respond to the Office Action, the substitute specimen needs to have been in use prior to the original six-month Notice of Allowance deadline.

Let’s quickly break this down. If you applied for an Intent to Use trademark and a Notice of Allowance was issued on June 14, you would have until December 14, 2019 to submit a Statement of Use with specimen. Let’s say you do this on November 1. But the trademark examiner deems your specimen unacceptable and issues an Office Action on January 23, 2020, giving you until July 23 to submit a substitute specimen. HOWEVER, that specimen must show use prior to the original December 14, 2019 date. If you are unable to produce a substitute specimen showing use prior to that original six-month Notice of Allowance deadline, your trademark application will abandon and you will have to file a new application and risk losing you trademark rights.

This is where the “insurance” extension comes into play, with the potential to save you stress and money. If you are at all unsure about your specimen, you can file a Statement of Use and extension request simultaneously. This will give you an additional six-month safety net if your specimen is rejected.

Going back to our hypothetical timeline: if you filed an extension request in addition to your Statement of Use on November 1, and the trademark examiner issued the same Office Action on January 23, that extension would grant you an additional six month window in which to fix any deficiency with the specimen.

Filing an “insurance” extension as a contingency plan is a fraction of the cost of filing a new application. The trademark department at Drumm Law will do whatever we can to make sure that the specimen you provide for the Statement of Use will be accepted, but it is impossible to know what the many attorneys at the USPTO will accept and what they will reject.  Give yourself some time.

Email us at trademark@drummlaw.com and we would be glad to review the specimen you intend to use and, if you think it’s appropriate, talk to us about filing an “insurance” extension.  The last thing we want is for you to waste money because your specimen was rejected.

** It should be noted that you are only allowed to file one insurance extension, even if you have not met your 36-month extension limit.