Insurance extensions can be a useful tool when filing a statement of use in an intent to use trademark application. The insurance extension provides additional time to correct any deficiencies in a statement of use before the filing deadline of the statement of use.
Per TMEP §1108.03, one extension of time request filed with or after the statement of use permitted. However, it must be filed within the same 6 month period that statement of use is filed. However, if one files the insurance extension before filing the statement of use, they obtain additional time. The applicant obtains almost a year to use the mark and correct any deficiencies.
Let’s look at an example:
- January 1, 2020 – Notice of allowance issues
- July 1, 2020 – First extension request filed (expires January 1, 2021)
- July 2, 2020 – Statement of use filed
- August 3, 2020 – Office Action issues stating specimen does not meet requirements (response due February 3, 2021)
- January 1, 2021 – Second extension request filed (insurance extension)(expires July 1, 2021)
- February 3, 2021 – New specimen submitted in response to Office Action (must note that extension was filed and enumerate intent to amend to new use dates and to submit new specimen)
- February 10, 2021 – New Final Office Action issued rejecting specimen (response due August 10, 2021)
- New specimen submitted prior to August 10, 2021. Must have a use date prior to July 1, 2021 (when the insurance extension would expire)
An insurance extension provides additional time to correct any specimen deficiencies when filing a statement of use.
As shown above, one can maximize the effect of an insurance extension by filing at the correct time. Only one extension permitted if filed at the same time or after the statement of use (within the same 6 month period). Conversely, if the extension is filed before the statement of use, one can obtain a second extension if needed to correct any deficiencies in the specimen. It is well worth it to file an extension prior to filing the statement of use to obtain the extra time.