Stumped by the Technicalities of the Trademark Process?

Got a Notice of Allowance on your Trademark Application?  Great!   But Now What?

Obtaining a trademark is crucial for any business owner or entrepreneur who wants to safeguard their brand. However, the process can be daunting for business owners who decide to go it alone without the benefit of an attorney leading the process.  Receiving a Notice of Allowance from the United States Patent and Trademark Office (USPTO) is a key milestone in this process. In this blog article, we'll discuss what a Notice of Allowance entails and guide you through the necessary steps to safeguard your trademark after receiving that notice.  Hopefully, this information will help alleviate some of the stress and confusion revolving around intent-to-use trademark applications.

Intent-to-Use Filing Basis

Before we dive into a Notice of Allowance, it is important to understand what an intent-to-use trademark application entails.  When you file a new application at the USPTO trademark office, you can file under Sec. 1(a) if you are already using the trademark in your business at the time of the application.  If you would like to file an application for a trademark that you plan on using in the future (but are not yet currently using), you may file under a Sec. 1(b) basis.  A Sec. 1(b) basis is called an "intent-to-use" basis because you are giving notice to the world that you intend to use the trademark at some time in the future.  This blog article will focus on trademark applications filed on an "intent-to-use" basis.  (for more detailed information about an "intent-to-use" trademark application, see our blog article on the topic - https://www.iveticlaw.com/can-you-get-a-trademark-if-it-is-not-yet-being-used-what-entrepreneurs-should-know-about-filing-an-intent-to-use-trademark-application)

What are the Steps in the Trademark Process Before a Notice of Allowance?

It is important to know that there are several steps in the trademark process that must be completed before you receive a Notice of Allowance.

Examination

After you file a trademark application (regardless of the basis) it will take some time for that trademark to be assigned to an Examiner.  After several months, finally, your application will be assigned to a USPTO examining attorney, who will assess if there are any problems or deficiencies with regard to your application and the trademark being sought.  Among other things, the examiner's attorney will assess if there is a likelihood of confusion arising from already registered trademarks that may conflict with the trademark in your application.  Likewise, the examiner attorney will assess if you have properly identified the classes sought for protection and if the trademark being sought fits the pre-requisites to be protected.  The examiner's attorney will either approve the application for the next phase, or they will issue an office action (refusal) identifying the problems or deficiencies (and allowing you a chance to address/correct them).

Publication for Opposition

After an intent-to-use trademark application passes the examination phase, it will be published in the Gazette for a period of 30 days, in order to give an opportunity for any third parties to voice their objection to the trademark's registration.  This can take the form of competitors, or really anyone which a stated interest relating to the trademark in question.  If someone files an opposition, then a legal proceeding commences.  However, if no one files any opposition during the statutory time period, the intent-to-use trademark application is prepared to go on to the final stages.

Notice of Allowance

If there are no 3rd party oppositions addressed at an intent-to-use trademark, then the USPTO trademark office will issue a Notice of Allowance (NOA).  

What does a Notice of Allowance mean? 

The Notice of Allowance serves as an official document issued by the USPTO. It signifies the successful completion of the initial examination process and opposition period for your trademark application. This is, in essence, a statement issued by the USPTO that signifies that a trademark application has successfully completed the thirty-day opposition period after being published in the Official Gazette. This statement (NOA) validates that the trademark in question is eligible for registration.  Simply put, it indicates that your trademark is on its way to being registered, but there are still a few steps to be taken.  If you have received a Notice of Allowance, that is a great achievement, but before you celebrate, make sure that you know what additional steps are required to mature to a trademark registration.

Submission of the Statement of Use 

Subsequent to receiving the Notice of Allowance, you are required to submit a Statement of Use. This statement serves as a formal declaration (ie. proof) that the trademark is now actually being utilized in commerce. You have a timeframe of six months from the date of receiving the Notice of Allowance to submit this statement. This statement must be accompanied with a specimen proving and showing the actual use of the trademark that was part of the intent-to-use application, for the goods/services in the application.  Along with the specimen(s), the Statement of Use must also be submitted along with the appropriate filing fee (currently that fee is $100 per class).

Extending the Time Period

If you do not file a Statement of Use (also called a SoU) within the 6 month period, the application is considered abandoned.  Nevertheless, you have the option to, request extensions if necessary. To obtain an extension of time to file the Statement of Use, you need to do so before the expiration of the 6 month period, and pay the appropriate filing fee. However, you cannot perpetually keep filing extensions.  You are only allowed to file up to five extensions.

What supporting materials are essential for the Statement of Use?

The Statement of Use necessitates proof of the trademark's usage in commerce. This evidence may comprise images of your product, packaging labels or advertisements that feature the trademark. It should clearly demonstrate the utilization of the trademark in relation to the goods or services specified in your, application.  In short - you need to provide adequate specimens of use, just like a Sec. 1(a) trademark is required to do at the time of the application.  (for a further discussion on specimens of use - see our blog article on the topic - https://www.iveticlaw.com/navigating-the-uspto-trademark-process-the-role-of-specimens-in-applications-and-renewals)

Fee for the Statement of Use

There is a fee involved in submitting the Statement of Use. Currently, the cost is $100 per category of goods or services. It is important to allocate funds for this, fee as part of your trademark registration process.

Conclusion

In summary Receiving a Notice of Allowance is a momentous achievement in the journey of registering your trademark, but it does not mark the conclusion.  There are still important steps to be taken to ensure that your application matures to a registration.  Failure to follow the rules or take the appropriate steps to fulfill the post-Notce of Allowance requisites can be fatal to your trademark application.   Submission of a Statement of Use and presentation of evidence regarding the trademark's usage in commerce are essential steps to take. These actions will bring you closer to, finalizing your trademark registration and safeguarding your brand identity.  Given the importance of getting things right - it is a good idea to consult with a trained and licensed trademark attorney.  It is never too late in the process to consult with an attorney, and the Notice of Allowance phase of the procedure is an ideal point to seek out a trademark professional lawyer - who can make sure that you follow through correctly with the last steps to get over the finish line successfully. 

Our office regularly assists trademark clients across the US and even internationally.  We would be happy to answer your questions and step in to assist you with the final steps following a Notice of Allowance.  Remember - we offer a free initial consultation to answer your questions and to allow you to make sure we are the right fit for your trademark needs.  Call us today!

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