A Notice of Allowance is issued by Examining Attorneys during intent to use trademark applications after the mark has been published for thirty days and no third party opposed the mark or any opposition cases have been revolved in favor of the application.
If an Examining Attorney finds no issues with an intent to use application (1(b)), then it will be Approved for Publication in the Official Gazette where any third party may oppose the application. Assuming the application survives the thirty day Opposition Period, the Examining attorney will issue a Notice of Allowance. This is different from use base applications, which proceed to registration once the Opposition Period ends.
Delivery of Notice of Allowance
Most trademark applicants file their trademark applications electronically, and the United States Patent and Trademark Office (USPTO) responds to application by email and posting relevant status updates on the Trademark Status and Document Retrieval (TSDR) system. For most applicants, their Notice of Allowance will be delivered by email and be put into the TSDR system for them to see. In the rare case an applicant filed their application on paper and through the mail, their Notice of Allowance will be sent to them through the mail. An example of what the Notice of Allowance email received by an applicant and how it appears in the TSDR system is below.
The Notice of Allowance for MAKE AMERICA GREAT AGAIN was issued on December 24, 2013 for the application filed on November 19, 2012 indicating President Trump had plans to run well before his campaign announcement on June 16, 2015.
What to do After Receiving a Notice of Allowance
When an Examining Attorney issues a Notice of Allowance, the clock starts ticking and trademark applicants, or their trademark counsel, have six months from the mailing date to a) file a Statement of Use; or b) file a six month extension of time to file a statement of use. If the applicant does not file either a Statement of Use or an extension, the application will be abandoned and the applicant will lose their time and investment in the application.
Statement of Use
A Statement of Use requires the trademark owner to submit a specimen, the first use dates for the mark, and promise under oath that the mark is being used in connection with all the applied goods and/or services. For more information on Statement of Use filings, visit our detailed blog post on Statement of Use Filings.
Six Month Extension to File a Statement of Use
If the trademark applicant is not prepared to file a Statement of Use because they do not have a proper specimen, or the mark has not been used in connection with all the applied for goods and/or services, they can file a six month extension of time to file a Statement of Use.
The first six month extension is free, however, each extension after the first extension cost an additional $125 USPTO fee. Trademark applicants, on their own or through their trademark attorney, can file up to five extensions. So from the time the Notice of Allowance is issued until the last extension runs out, the trademark application can live in the Notice of Allowance stage for three years.
Do you have any questions about a Notice of Allowance? Did you receive one and need an attorney to file response documents with the USPTO? Then Contact Us today!