Understand the Trademark Notice of Allowance Process

Trademark protection is crucial to safeguarding your brand and its intellectual property. And understanding the trademark Notice of Allowance and its implications can make a significant difference. Are you ready to dive into this essential aspect of trademark law and learn from real-life examples? Let's embark on this enlightening journey together.

Nearly registered? 

If you've received a Notice of Allowance from the USPTO (United States Patent and Trademark Office):

It means that your intent-to-use trademark application has been examined. It also means that it appears to be eligible for registration (Hooray!). 

But, it's crucial to understand the next steps and requirements to fully register your trademark.

Understanding the Notice of Allowance

Receiving a Notice of Allowance is an encouraging milestone, but it's not the final step in the trademark registration process. 

This notice is typically issued for applications filed with the "intent to use" basis. This means you were not yet using your mark in commerce when you filed the application. 

It confirms that your mark has been published in the Official Gazette. It also signifies that no opposition has been filed during the 30-day publication period.

Fees associated with a Notice of Allowance

There are fees associated with the paperwork required after receiving a Notice of Allowance. As of the time of writing this, the USPTO filing fees for electronic filing are as follows:

• Statement of Use: $100 per class
• Extension request: $125 per class
• Request to divide an application:  $100 per new application created

Making changes to your application

While some changes are permitted after receiving a Notice of Allowance, not all changes can be made. To determine which changes are allowed, you should review the Trademark Manual of Examining Procedure.

Permissible changes at this stage include:

• Correcting minor errors
• Updating contact information
• Transferring ownership
• Modifying goods or services. 

However, changing the filing basis is generally not allowed.

Navigating the post-allowance phase

Upon receiving a Notice of Allowance, you’ll need to follow these steps:

• File a Statement of Use
• Request extensions if needed
• Address any Office Actions issued by the USPTO

The deadline for these filings is six months after the Notice of Allowance date. During this time, the examining attorney may review the application and issue any Office Actions if necessary. 

Please file a Statement of Use or Extension Request by the deadline to avoid application abandonment.

Let's now delve deeper into the process of filing a Statement of Use, requesting extensions, and handling Office Actions.

Filing a statement of use

Submitting a Statement of Use within six months of receiving the Notice of Allowance is essential to prevent the application's abandonment.

A Statement of Use is an official document that certifies that the trademark is now being used for the specified products and/or services. This indicates that the brand is being used for commercial purposes.

Registration timeline

Once you have filed your Statement of Use (SOU), it’ll be reviewed by a USPTO Examining Attorney. 

They will either approve the SOU or issue an office action, which highlights any legal issues with your mark or application.

The time it takes to obtain registration depends on the number of office actions and how promptly they are resolved.

Generally, if there are no significant issues:

The USPTO will issue registration approximately two months after approving the SOU. 

Extension requests

In some cases, trademark owners may need more time to use the trademark in commerce. In such scenarios, you can request an extension. An applicant can submit up to 5 extension requests, each for six months. To file an extension request, you must:

1. Submit a request to the USPTO within six months of the allowance date.
2. Include a verified statement attesting to your genuine intent to use the trademark in commerce.
3. Pay the appropriate filing fee.

Office Actions and resolving issues

An Office Action is an official letter from the USPTO highlighting legal problems with your application or mark.

It's crucial to respond to the office action and address all the mentioned issues to proceed with the registration process. 

Some typical causes for the USPTO to issue an Office Action include:

• Similarity to existing registrations
• Descriptiveness
• Issues describing goods and services provided in the application

Maintaining your trademark registration

Once your trademark is registered, you must submit regular maintenance documents and meet commercial use requirements to keep it active. Maintenance documents include:

• Renewal documents
• Cautionary notices
• Tax documents
• Affidavits of use
• Proof of renewal of the essential registration

These documents for trademark maintenance must be filed with the USPTO every ten years, starting in the fifth and sixth year. 

Staying organized and adhering to the required timelines ensures your trademark registration remains active and protected.

Consulting an attorney for legal advice

It's important to note that the information provided in this blog doesn't constitute legal advice.

For specific legal guidance regarding your situation, we recommend seeking legal advice. 

Your attorney can help ensure compliance with trademark laws and guide you through the registration process effectively.

Remember, protecting your brand name through online trademark registration is a valuable investment in your business's future success.