A Notice of Allowance is a document from the USPTO informing you that you can file a Statement of Use and/or Extension of Time within 6 months from the date of issuance. The USPTO will send the Notice of Allowance to you or your attorney via email. As illustrated below, the Notice of Allowance is near the trademark pendency process finish line.
Some applicants see this document and give up due to a change in business plans or perhaps a misunderstanding. Trademark rights in the United States require proof of use, and a Notice of Allowance is a reminder to provide such use.
The goal of this blog is to address some of that confusion in plain English.
Why Did the USPTO Issue a Notice of Allowance?
To be clear, a Notice of Allowance is not a rejection.
Think back to when you or your attorney filed a trademark application. In most cases, the application is filed as either Use in Commerce (a.k.a. “Section 1(a)”) or Intent to Use (also called “Section 1(b)”). Intent to Use applications are also called “Section 1(b) Applications,” and I cover them extensively in this blog.
With a Use in Commerce application, the evidence is provided up-front with the application filing. In contrast, an Intent to Use Application does not provide proof of use. Proof of use is not necessary to an Intent to Use application because the client either does not have it, or the attorney deems the evidence insufficient. See TMEP § 901.04.
In other words, the USPTO issues NOAs because of the privilege of filing an “Intent to Use Application.” A Notice of Allowance (or, “NOA” for short), is a document that the United States Patent and Trademark Office (“USPTO”) issues because it must obtain evidence of use in commerce.
What Is the Notice of Allowance Asking From My Business?
The USPTO, through the Notice of Allowance, is asking the applicant to submit:
- a Statement of Use that shows proof of use in commerce,
- an Extension of Time to File a Statement of Use, or
- both
A Statement of Use shows proof of use in commerce. In this blog, I explore Statements of Use in depth.
An Extension of Time to File a Statement of Use (or “Extension of Time”) is precisely what it sounds like; it grants the applicant a generous six months’ time to (1) provide proof of use in commerce; or (2) file another Extension. There are a maximum of five extensions per trademark application.
Finally, if the applicant is coming too close to a deadline, it is custom to file both a Statement of Use and Extension of Time. Due to the outdated nature of the USPTO’s servers, a professional trademark attorney will recommend this option depending on the proximity to the deadline (usually 1 month or less from the deadline).
When Does the Notice of Allowance Issue?
Generally, after publication in the Official Gazette runs its 30-day period a Notice of Allowance issues. See the graphic illustration above. Publication in the Official Gazette is a formality and allows challengers a 30-day window to oppose a trademark. There is an exception for trademarks on the Supplemental Register. See 37 CFR § 2.82.
What Type of Evidence is Needed for a Notice of Allowance?
The type of evidence (called “proof of use”) for a Notice of Allowance depends on whether the applicant is filing a Statement of Use, and if they filed for goods and/or services. The evidence for goods (as well as the placement of the trademark) can vary significantly from that of services.
Statement of Use
A Statement of Use shows evidence of the use of the mark in commerce (i.e., proof of use). “Use in Commerce” is trade over which Congress exerts authority.
- Example 1: A software company selling software as a service out of San Francisco to U.S. clients with appropriate evidence of the software for sale would qualify. But a Canadian software company doing the same, but only to Canadian clients, would not.
- Example 2: A contractor on social media that intermittently sells construction material, has no means of direct contact, and inconsistently uses the trademark on either the product or services would probably not qualify for a Statement of Use.
An applicant may also file proof of use earlier in an Amendment to Allege Use.
Extension of Time
Evidence is not needed for an Extension of Time. However, after the first Extension of Time, the USPTO may inquire about the reason for the extension. For instance, the USPTO may ask whether the extension request is due to product research or marketing efforts.
E. How Much Does Each Cost?
A Statement of Use is $100 per International Class of Goods and/or Services. While an Extension of Time is $125 per International Class of Goods and/or Services. Syed Law charges a modest fee on top that covers reasonable attorney labor and merchant service fees.
F. Conclusion and Recommendation
In conclusion, a Notice of Allowance asks for either (1) a Statement of Use, (2) an Extension of Time, or (3) both (if the deadline is close).
We recommend you contact an experienced trademark attorney who can help you handle the Notice of Allowance and take the work off your plate. Please feel free to schedule a call or contact us at 312-618-0713.
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