Allegations of Use/Statements of Use – Intent to Use Applications
Applications filed on the basis of intent to use, must be converted to use before a registration will issue. The reason for this is simple — Congress’ power to regulate trademarks on a federal level comes from the commerce clause of the constitution (and the treaty powers). Accordingly, applications filed on the basis of intent to use, must be placed in use. Please note that applications filed on the basis of a home (foreign) application or registration do not need to be placed in use in the United States in order for a registration to issue. However, like all United States registrations, the mark is vulnerable to attack after three (3) years of nonuse, constituting prima facie abandonment of a mark.
During Trademark Examination – Before Publication of Application
An Allegation of Use can be filed at any time prior to the application’s acceptance for publication. Once the application is accepted for publication, a “block out” period commences until a Notice of allowance issues. Therefore, if use of the mark has commenced, or you believe it will commence before acceptance for publication, please contact me so I can provide you with additional information pertaining to the filing of an allegation of use prior to the publication of the mark.
After Publication – Notice of Allowance Stage
Approximately three months after the expiration of the opposition period or successful conclusion of an opposition action, a Notice of Allowance will issue. The Notice of Allowance starts the three three (3) year period to commence use of the mark. It is necessary to file extension requests every six (6) months until use of the mark commences. After the first extension request, it is necessary to advise the trademark office what steps are being taken to commence use of the mark in commerce. Examples of acceptable steps are:
- product or service research development;
- market research;
- promotional activities;
- steps to acquire distributors; and/or
- steps to obtain required governmental approval, or similar specified activities
The costs to file Allegations of Use or Extension requests to file allegations of use is dependent upon the number of classes covered in the application. We will provide you with this information once we determine how many classes your application needs to include.
The foregoing is a general discussion of Intent to Use applications and the filings of allegations of use. For specific details on your situation, we can discuss this further. Please see our Schedule of Charges for additional applicable charges to intent to use applications.