Trademarks-What Is A Notice of Allowance?

What is a notice of allowance?

A notice of allowance is a notification from the USPTO that your mark has survived the opposition period following publication in the Trademark Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet

A trademark registration cannot be issued until you provide proof that the mark is being used in commerce. We need to provide a “specimen”, which is proof that there is a bona fide use of the mark in the ordinary course of commerce.  

What is use in commerce?

A specimen is a real-world sample showing the mark exactly as consumers actually encounter it in the marketplace, not a mockup, a designer’s proof, no AI generated mockups, or an unused label straight off the printer.

For goods, acceptable specimens include photos of the actual product bearing the mark, tags or labels affixed to the product, packaging, or point-of-sale displays photographed alongside the goods. A webpage can work as a goods specimen, but only if it functions as a point of sale, meaning it shows the mark next to the goods along with a way to order or purchase them, and it must include the URL and the date it was accessed or printed. Advertising by itself, without an associated means of purchasing the goods, is not enough for a goods specimen.

For services, the bar is different: advertising and marketing materials that show the mark in connection with a description of the services (a website page describing the service, a brochure, signage at the location where services are performed, or an ad) are generally acceptable, because a service cannot be packaged and boxed the way a product can.

If a consumer is able to go on your website, Ebay, Amazon, etc. and purchase the product, this is sufficient. 

If your item is being sold online, you may provide following as a specimen:

• A screenshot of your website where the product is available for purchase
• The website link and the date the site was accessed
• Websites accepting only pre-orders are unacceptable as specimens

If your item is being sold offline you may provide following as a specimen:

• A photo of the product being available in a store or restaurant
• The name/address of the business
• The date the product became available for purchase at the business
• The date the photo was taken

SERVICES-An acceptable service mark use in commerce refers to the services being rendered within the United Sales in connection with the mark. Acceptable specimens of use for service marks may include advertising and marketing materials displaying the mark and referencing the services identified in the application.

Examples of insufficient usage would include token use or minimal use that is done for the sole purpose of supporting a trademark application. Services or goods must be rendered, and not merely offered. While there is no specific number as to the units or dollar amount sufficient to support bona fide use in the ordinary course of trade, the courts have been able to find insufficient usage in cases such as a single shipment, a single sale of a handful of units, a single transaction within a span of years, etc.

“Date of First Use Anywhere” vs. “Date of First Use in Commerce”: Why the Distinction Matters

Every use-based filing (and every SOU) asks for two dates, and they are not interchangeable.

Date of first use anywhere is the first time you used the mark in any bona fide commercial way, even if that use was purely local or intrastate, such as selling a product only at a single shop in one city.

Date of first use in commerce is the first time that use occurred in commerce Congress can regulate, meaning interstate commerce, commerce with a foreign country, or commerce that affects one of those. This date can be the same as your first-use-anywhere date, but it can never be earlier than it. If your business started as a strictly local operation and only later shipped product across state lines or served out-of-state clients, those two dates will differ, and the USPTO wants both so it can confirm your federal registration rests on federally regulable commerce, not purely local sales.

Getting these dates wrong, or conflating them, is a common source of later disputes over priority, so we advise clients to document both dates carefully, with supporting records, from the moment the mark first goes into use.

Technical Requirements For A Specimen:

Beyond the content of the specimen itself, the USPTO’s electronic filing system (TEAS) imposes technical formatting rules, and a specimen that fails them will bounce back before an examiner ever evaluates the substance. Specimens are typically uploaded as a JPG or a PDF. JPG files are capped at 5 MB. PDF files are capped at 30 MB, with a maximum page size of 14 by 14 inches, and any images embedded in the PDF must be in GIF, BMP, TIFF, JPG, or PNG format; the PDF itself must be version 1.3 or later, flattened to a single layer, and free of security settings, passwords, encryption, embedded scripts, active hyperlinks, or multimedia content.

On image quality, USPTO guidance calls for scanning or photographing at 300 to 350 DPI. In practice, that means the photo or screenshot needs to be sharp and well-lit enough that the mark and any surrounding text, such as the product label copy or the webpage’s ordering information, are legible without zooming or guessing. Blurry phone photos, heavy glare on packaging, cropped-off labels, or a screenshot that cuts off the URL bar are among the most common reasons a specimen gets kicked back for a substitute, separate from any question about whether the use itself qualifies. It is worth taking the extra photo or the cleaner screenshot before filing rather than after receiving an office action.

How long do I have to provide a specimen?

You must provide a specimen within 6 months from the date the notice of allowance is issued. If you are not able to provide a specimen within the six-month period, you may file an extension to file a statement of use, which grants you a six-month extension to provide the specimen. You may file up to five extensions. A Statement of Use may not be filed more than thirty-six (36) months from when the Notice of Allowance is issued. The deadline for filing is always calculated from the issue date of the Notice of Allowance. There is an additional charge to have our office file for an extension on your behalf.

If an extension to file the statement of use or a statement of use is not filed within 6 months from the date the notice of allowance is issued, your mark will enter an abandoned status and you may have to re-file your application again.