When a person or business files an application with the U.S. Patent & Trademark Office (“USPTO”) to register a trademark, there are two options — file to register a trademark that is already being used in commerce or file what is called an “intent-to-use” application. As the name implies, with an “intent-to-use” application, the applicant is seeking registration of a trademark that will be used in commerce. But USE in commerce is still a requirement for the issuance of a trademark registration and no registration will be issued UNTIL use in commerce is established. This is the purpose of the USPTO issuing Notices of Allowance for intent-to-use trademark registration applications. Once received, the applicant can begin using the trademark in commerce and then provide proof of use. Once proof of use is established, then the USPTO can issue a Certificate of trademark registration.

What is a Trademark Notice of Allowance?

As explained by the USPTO, a trademark Notice of Allowance is a written document sent by the USPTO to the applicant. A trademark Notice of Allowance is only used for intent-to-use applications. From the date when the Notice of Allowance is issued, the applicant has six months to begin using the trademark in commerce (or longer, if a request for extension is made). “Use in commerce” means placing the trademark on the goods being manufactured/sold by the applicant and/or placing the trademark on the packaging, labels, instructions, warranty cards, etc. By the end of the six month period (or the extension(s)), the applicant must file with the USPTO a document called a Statement of Use which provides evidence that the trademark has been and is being used in commerce. No trademark can be registered without a Statement of Use or other evidence that the trademark is being used in commerce. If the Statement of Use is acceptable, fees are paid and other requirements are met, the USPTO will issue a Certificate of Registration within about six to eight weeks.

A trademark Notice of Allowance is issued towards the end of the application process. When seeking registration, all trademarks must be published in the USPTO’s Official Gazette. Publication is for a period of 30 days. The purpose of publication is to give third parties an opportunity to see the trademarks that are being proposed for registration and to allow third parties to object to registration. An objection might be based on the fact that the proposed trademark is already owned and registered by someone else or that the proposed trademark is “confusingly similar” to one that is already owned and registered. An objection to registration must be filed in writing with the USPTO and there are very short deadlines for filing objections.

A Notice of Allowance will be issued by the USPTO about eight to twelve weeks after the date the proposed trademark was published IF there have been no objections received by the USPTO. As noted, a Notice of Allowance allows the owner to begin using the trademark in commerce and the six-month time limit to begin running for filing of an applicant’s Statement of Use (or a request for an extension of time). Applicants are advised to begin using their trademark immediately after a Notice of Allowance is received. The date of the Notice of Allowance establishes the priority date for filing a Statement of Use which can be important if competitors are “racing” to register the same (or similar) trademarks.

If an objection is filed, then a Notice of Allowance is issued when — and if — the objection is resolved in favor of the applicant.

Contact Revision Legal

For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

Extensions of Time to File a Statement of Use

Not every business is ready to begin using its trademark in commerce within six months of receiving a Notice of Allowance. Product launches may be delayed, distribution agreements may still be in negotiation, or manufacturing timelines may push commercial availability beyond the initial six-month window. Recognizing this reality, the USPTO permits applicants to request extensions of time to file a Statement of Use.

Each extension grants an additional six months. Applicants may request up to five extensions, giving a total of three years from the date of the Notice of Allowance to file a Statement of Use. Each extension request must be filed before the current deadline expires and must include the required fee. Extension requests do not require a showing of good cause for the first request, but subsequent requests must include a verified statement that the applicant has a continued bona fide intention to use the trademark in commerce. Failure to file either a Statement of Use or a timely extension request will result in abandonment of the application.

What Constitutes “Use in Commerce” for Trademark Purposes?

The Lanham Act defines “use in commerce” differently for goods versus services. For goods, a trademark is used in commerce when it is placed on the goods, on the containers or packaging for the goods, or on tags or labels affixed to the goods, and the goods are sold or transported in commerce. For services, a trademark is used in commerce when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.

The use must be genuine commercial use, not merely token use created solely to preserve trademark rights. The USPTO and courts distinguish between bona fide commercial use and token or sham use. Sham use — selling a small number of products to a friend solely to satisfy the use in commerce requirement — will not support a valid trademark registration. Genuine commercial use requires that the goods or services be actually offered to the public in the ordinary course of trade.

The Statement of Use: What It Must Contain

When an applicant files a Statement of Use with the USPTO, it must include:

• A verified statement that the applicant is using the trademark in commerce on or in connection with the goods or services identified in the application
• The date of first use of the trademark in commerce
• The date of first use of the trademark anywhere
• A specimen showing the trademark as actually used in commerce — for goods, this is typically a photograph of the trademark on the product or packaging; for services, it is typically advertising materials showing the trademark in connection with the services
• Payment of the required fee per class of goods or services

Specimens that do not adequately show trademark use — such as computer-generated mock-ups rather than actual products, or advertising materials that do not use the trademark in the exact form in which it was applied for — will be refused by the examining attorney. A specimen refusal requires the applicant to submit an acceptable substitute specimen within a specified time period.

Priority Rights and the Intent-to-Use Application

One of the most significant advantages of the intent-to-use trademark application is the priority date it establishes. Under the Lanham Act, an intent-to-use application creates constructive use of the trademark as of the application filing date, even though actual use has not yet begun. This means that if another party begins using the same or a confusingly similar mark after your application filing date, your registration — once issued — will give you nationwide priority over that later user.

This priority benefit is particularly valuable in competitive industries where multiple businesses may be developing similar brands simultaneously. Filing an intent-to-use application as soon as you have a bona fide intent to use a mark — even months before your product or service launches — locks in your priority date and protects your branding investment. Contact the trademark lawyers at Revision Legal at 231-714-0100 to discuss the intent-to-use filing strategy and the Statement of Use process.