Maximizing Use of Insurance Extension When Filing Statement of Use

Trademark Rule 2.89(e)(1) provides for one extension request to be filed with or after the statement of use so long as it is filed within the same 6 month period the statement of use was filed. 37 C.F.R. §2.89(e)(1). This is often referred to as an "insurance" extension request.

As stated in TMEP §1108.03, the purpose of the 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 statement of use.

To insure the maximum amount of time in which to correct any deficiencies, applicants can file an extension request on the last day of the existing extension period and then the next day, the first day of the next extension period, file the statement of use.[1] Then, if the statement of use is deficient, the applicant may file one further insurance extension request before the end of that six-month extension period in which the statement of use is filed. This has the effect of providing almost one year to make use of the mark and correct any deficiencies in the statement of use.

The following is an example of how this strategy could be used so that an applicant who files a statement of use on July 2, 2010 will be able to make use and amend its dates of use to a date no later than July 1, 2011.

  • January 1, 2010, notice of allowance issues.
  • July 1, 2010, applicant files a first extension request, providing him or her until January 1, 2011 to file a statement of use or a second extension request.
  • July 2, 2010, applicant files a statement of use. The statement of use is forwarded to the examining attorney for examination. Upon examination, the examining attorney determines that the specimen does not meet the statutory requirements.
  • July 23, 2010, an Office action issues making a response due on January 23, 2011. The current extension allows until January 1, 2011 to either make use or file an insurance extension.
  • January 1, 2011, applicant files an insurance extension (the second extension request) that gives them until July 1, 2011 to amend their statement of use with new use dates and provide a new specimen.
  • January 23, 2011, applicant responds to the Office action. In the response, the applicant states that an insurance extension request has been filed, and that the applicant intends to amend the dates of use and submit a new specimen.
  • February 1, 2011, the examining attorney issues a final refusal continuing the requirement for a good specimen, making a response due on August 1, 2011.Applicant may then submit a new specimen any time before August 1, 2011 with dates of use that are not later than July 1, 2011. Of course, the applicant may also want to submit an appeal before the deadline to maintain their options.
[1] If this extension request is not the first extension request, applicant must include a statement of applicant's ongoing efforts to make use of the mark in commerce. 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(b)(4). Applicant may satisfy the requirement for a showing of good cause by asserting that applicant believes that it has made valid use of the mark in commerce, and is in the process of preparing (or is concurrently filing) a statement of use, but that if the Office finds the statement of use to be fatally defective, applicant will need additional time to file a new statement of use. However, such a statement will be accepted only ONE TIME as a statement of applicant's ongoing efforts to make use the mark in commerce. Repeating these same allegations in a subsequent extension request will not, without more, be deemed to be a statement of applicant's ongoing efforts, as required by 37 C.F.R. §2.89(d). Therefore, if such a statement must be repeated in a later-filed insurance extension, applicant should provide an additional explanation of the efforts being made to use the mark in commerce. See TMEP §1108.02(f).