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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?

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.  

GOODS– An acceptable use in commerce refers to the product being sold and transported within the United States in the ordinary course of trade with the mark displayed on the product or on packaging, labels, etc. A catalog page, brochure or online point-of-sale illustration may suffice if the applicant can show that there are means of ordering available. Advertising and marketing materials are generally unacceptable specimens for goods alone if there are no means to order the item. Services must be rendered, and not merely offered. A webpage offering pre-sales or pre-orders does not constitute use in commerce.

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.

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. 

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