Helped Clients Recover Over $25 Billion. Since 1979.
Helped Clients Recover Over $25 Billion. Since 1979.
An intent-to-use trademark application doesn’t register until the owner proves the mark is in use. The Schenk Law Firm files Statements of Use and extension requests, prepares specimens the USPTO will accept, and splits applications when only some goods or services are ready.
Statements of Use
After the USPTO issues its Notice of Allowance, we file the Statement of Use with a specimen for each class.
Extension Requests
If the mark isn’t in use yet, we file extension requests, each adding six months, up to the USPTO’s limit of five.
Specimens
We tell you what the USPTO will accept as proof of use, such as product labels, packaging, signage, or a website, and review your specimen before filing.
Specimen Refusals
If the examiner rejects a specimen, we prepare the response, including a substitute specimen when needed.
Requests to Divide
When some classes are in use and others aren’t, we divide the application so the classes in use can register now.
Allegations of Use Before Approval
If the mark goes into use before the application is approved for publication, we can file an amendment to allege use at that stage.
We got a Notice of Allowance. Are we registered?
Not yet. The Notice of Allowance starts a six-month clock to file a Statement of Use or an extension request.
We haven’t launched.
You can request an extension. Each one adds six months, and you can file up to five, so plan the launch around those deadlines.
Only some of our products are on the market.
We can divide the application so the products already being sold register now while the rest stay pending.
What counts as proof of use?
A specimen shows the mark as customers see it while buying the goods or services, such as a label, a tag, packaging, a store sign, or a website with a way to buy. Mockups and ads alone usually don’t qualify for goods.
We don’t plan to use one of the marks.
Then it may be best to let that application lapse. We’ll confirm with you before any deadline passes.
Experience
David Lizerbram has practiced trademark law for more than two decades and has handled more than 850 trademark filings.
Deadlines Tracked
We track the Statement of Use and extension deadlines for the applications in our docket and contact you before each one.
Specimens That Work
We review your specimen before filing.
Case Study
A creative agency filed a Statement of Use covering three classes, and the examiner rejected the specimen for the video production class because the website didn’t clearly mention those services. We worked with the client on new website text that described its production work, then filed the updated page as a substitute specimen. The USPTO accepted the Statement of Use ten days later, and the mark registered in all three classes.
Case Study
A media company held five intent-to-use applications for related brands, and not all of them were in use when the deadlines arrived. We filed Statements of Use for the brands that were active, used one extension where a launch needed a few more months, and let two unused applications lapse at the client’s direction. Both active marks registered on the same day.
Case Study
A health education organization’s application reached allowance after we overcame a final refusal with a request for reconsideration. Because its training programs were already running, we filed the Statement of Use six weeks after the Notice of Allowance with no extensions needed, and the mark registered.
Client names and identifying details are withheld. Results depend on the facts of each matter, and past results don’t guarantee a similar outcome.
The Schenk Law Firm is based in North Park, San Diego. We file Statements of Use and extensions for applicants in every state.
Trademark searches, applications, and protection for brand names and logos.
Responses when the USPTO refuses or questions an application.
Keeping a registration alive with its maintenance filings.
Reviving an Abandoned Application
What to do if a deadline was missed.
Checking a name before you file.
Trademark vs. Copyright vs. Patent
How the three kinds of IP protection differ.
Send us your serial number and launch plans, and we’ll tell you which filing comes next and when it’s due.
Contact us today to discuss your Statement of Use.
Request a ConsultationSix months to file a Statement of Use or a first extension request. With all five extensions, the total time is three years from the Notice of Allowance.
The first extension doesn’t need one. Later extensions require a statement of the ongoing efforts to put the mark into use.
Yes. The Statement of Use should cover only the goods and services actually in use, and the rest can be deleted or divided out.
The application is abandoned, but it can often be revived if you act quickly. See our revival page.