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. you 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 preferably displayed on the product itself or on external materials such packaging, tags and labels. In certain cases, a brochure or online point-of-sale display may suffice as a specimen of use for goods if certain requirements are met (e.g., means for ordering). Advertising and marketing materials are generally unacceptable specimens for goods. An insufficient usage would include token use or minimal use for the sole purpose of supporting a trademark application. Services must be rendered, and not merely offered. The USPTO states that a webpage that offers “pre-sale” orders (commonly known as “pre-orders”) for goods does not constitute “use in commerce” for the purposes of trademark registration if the goods are not yet available for the consumer to purchase.

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 must provide the following:

• 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, please provide the following:

• 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 for the sole purpose of supporting a trademark application. Services must be rendered, and not merely offered. Sales to foreign countries may also count as use in commerce. While there is no bright line test 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 file 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. 

If you do not file a statement of use or an extension to file a statement of use by the deadline, your mark will become abandoned.

If you fail to file the statement of use or the extension by the USPTO deadline, you must wait for the USPTO to change the status to “abandoned”, which may take several weeks. During this period, you are unable to file the petition to revive until the mark is switched to “abandoned” status.

Once your mark becomes abandoned, you will need to file a petition to revive + provide a specimen OR file a petition to revive + an extension to file a statement of use.