Filing a trademark application with the United States Patent and Trademark
Office initiates a lengthy process for the search, examination, and potential registration of a trademark. The Trademark Office reviews applications for technical and substantive requirements before allowing a mark to register. However, no application – with the exception of those based on foreign trademark registrations – is allowed to register without proof that the mark has actually been used in the marketplace. A Notice of Allowance is one part of the trademark application process.
Some trademark applications are filed on an in-use basis. This means that the mark is in use at the time the application is filed; the owners are actively selling their products under a brand, the company is promoting its services under a logo, or some other public, commercial use is being made of the applied-for trademark.
Other trademarks are filed on an intent-to-use basis. This means that the applicant, at the time of filing, is not using the trademark, but does have an intent to do so in the near future. At some point in the application process, the applicant must offer up proof that it has begun to use the mark in commerce.
In an intent-to-use trademark application, proof of use can be submitted early in the process. This is done by filing an Amendment to Allege Use. The Amendment to Allege Use provides the Trademark Office with an example of how the trademark is being used commercially, when the trademark was first used commercially, and then requests that the application be processed as an in-use application moving forward. An Amendment to Allege Use is not a required filing, and we file very few of them. There can be strategic reasons to file or not file an Amendment to Allege Use, but often times an Amendment to Allege Use is not filed simply because the applicant has not put the trademark to use in time.
If no Amendment to Allege Use is filed, then the Trademark Office reviews and processes the trademark application normally. If all goes well, after a publication period, the Trademark Office will issue a Notice of Allowance to the applicant. The Notice of Allowance invites the applicant to submit a Statement of Use. A Statement of Use if very similar to an Amendment to Allege Use, but is submitted after the publication period. The Notice of Allowance places a deadline on filing a Statement of Use of 6 months. If not Statement of Use is filed, the application is abandoned unless the applicant files a request to extend the time to file an SOU.
The Notice of Allowance is thus the Trademark Office’s way of formally inviting the applicant to submit proof of commercial use of the mark, and restricting the amount of time in which to do so. This moves applicants to either move the applications forward to registration or to let applications abandon.