Maximizing use of insurance extension when filing Statement of Use

Trademark Rule 2.89(e)(1) permits an applicant to file one request for an extension of time to file a Statement of Use (extension request) with or after the Statement of Use (SOU), but only if it’s filed within the same six-month period as the SOU. 37 C.F.R. section 2.89(e)(1). This is referred to as an "insurance" extension request.

As stated in TMEP section 1108.03, the purpose of an insurance extension is to get additional time to correct any deficiency in the SOU that must be corrected before expiration of the statutory deadline for filing the SOU.

To get the maximum amount of time for correcting any deficiencies with the SOU, applicants should file an extension request on the last day of the current extension period and the next day (the first day of the next extension period) file the SOU.[1] Then, if the SOU is deficient, the applicant can file one final extension request (this is the insurance extension request) before the end of the six-month extension period in which the SOU is filed. This will effectively provide an applicant with almost one year to make proper use of the trademark and correct any deficiencies in the SOU.

Here’s how this strategy could be used. In this example, an applicant who files an SOU on July 2, 2021 will be able to correct any deficiencies with the SOU no later than July 1, 2022, if an insurance extension request strategy is used.

  • January 1, 2021, the notice of allowance issues.
  • July 1, 2021, applicant files a first extension request, giving applicant until January 1, 2022 to file an SOU or second extension request.
  • July 2, 2021, applicant files an SOU, which is forwarded to the examining attorney for examination. The examining attorney determines that the specimen does not meet the statutory requirements and thus is unacceptable.
  • July 23, 2021, an office action issues regarding the specimen, with a response due October 23, 2021, and which includes the option to request one three-month extension of time to respond. The current request for an extension of time to file the SOU allows applicant until January 1, 2022 to either make use of the trademark or file an insurance extension.
  • October 23, 2021, applicant files a request for a three-month extension of time to respond to the office action. The request is granted, permitting applicant until January 23, 2022 to respond to the office action.
  • January 1, 2022, applicant files an insurance extension request (a second extension request) that gives applicant until July 1, 2022 to amend the SOU with new use dates of use and provide a new specimen.
  • January 23, 2022, applicant files a response to the office action that states an insurance extension request has been filed and the applicant intends to amend the dates of use and submit a new specimen.
  • March 1, 2022, the examining attorney issues a final specimen refusal, with a response due on June 1, 2022, and which includes the option to request one three-month extension of time to respond that, if filed, would make a response and/or notice of appeal due September 1, 2022. Applicant can then submit a new specimen any time before September 1, 2022 with dates of use not later than July 1, 2022. Of course, the applicant may also want to file a notice of appeal by the response deadline to maintain their options.

[1] If the insurance extension request is not the first-filed extension request after the notice of allowance, then applicant must also include a showing of good cause that specifies applicant's ongoing efforts to make use of the mark in commerce. 15 U.S.C. section1051(d)(2); 37 C.F.R. section2.89(b)(4). Applicant can satisfy this requirement by asserting they believe they have made valid use of the mark in commerce, and is in the process of preparing (or is concurrently filing) an SOU, but that if the USPTO finds the SOU to be fatally defective, the applicant will need additional time to file a new SOU. However, such statement of ongoing efforts will be accepted only ONE TIME. Repeating these same allegations in a subsequent extension request will not, without more information, be accepted as evidence of good cause. 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 the TMEP section1108.02(f).