Notice of Allowance
A Notice of Allowance (NOA) issues during the process of filing an intent to use trademark application. The notice issues after the examining attorney has approved the application and the application has published without any opposition.
Notice of Allowance Trademark
The USPTO receives over 400,000 trademark applications each year. This number has been growing consistently each year over the last decade.
Whereas all trademark applicants once would have needed to show actual use in commerce at the time of filing, applicants are now only required to have a bona fide Intent to Use the trademark commercially. Applications based on an intent to use must go through the same registration process as other actual use based applications. This includes a USPTO examining trademark attorney review, responding to Office Actions, publication for opposition and potentially dealing with the Trademark Trial and Appeal Board (TTAB). After this process, however, you’ll receive a Notice of Allowance rather than confirmation of registration.
Many trademark owners attempt to avoid additional fees by registering only after they’ve used their trademark in commerce. Doing this, however, means they miss out on the following benefits of filing on an intent to use basis:
- The application reserves rights against competitors by garnering an earlier filing date.
- The application allows you to discover whether a trademark is eligible for registration prior to spending any money to prepare for its use.
- The application potentially avoids trademark infringement claims from prior users of similar trademarks.
- The application provides public notice that you’re claiming rights over a trademark.
All these benefits are contingent on a brand’s intent to use the trademark in commerce. When a Notice of Allowance is received, the trademark owner has a 6 month deadline to engage in use. Receipt of a notice of allowance means that a trademark is allowed for registration, but that registration will not occur until a statement of use and appropriate specimens are received.
If trademark owner is unable to use the trademark in a timely manner, they have the option to request an extension. This provides an opportunity to engage in sufficient commercial use without facing trademark abandonment.
Below are some common terms encountered in the filing of a trademark application:
- Use in commerce: Use of a trademark in front of the consumer. This use must be in the ordinary course of trade and involve or affect interstate commerce.
- Statement of Use: A declaration to the USPTO that you’ve engaged in sufficient commercial use along with specimens of use.
- Specimen of Use: This evidence shows that the trademark is being used in commerce.
- Request for Extension: A 6 month request for extension can be filed if you are not yet ready to prove use. Extensions cannot surpass 36 months following issuance of the notice of allowance.
- Abandonment: When an applicant fails to respond to Office Actions or a notice of allowance, the trademark will abandon.
Your Notice of Allowance is an indicator that your trademark registration process is in the homestretch. Barring any unforeseen circumstances, you should be granted USPTO protection once you engage in sufficient commercial use.
Notice of Allowance Issued
The USPTO issues about 200,000 notices of allowance each year. Prior to receiving this notice, though, there are a few requirements and processes you must go through.
Show a Good Faith Intent to Use
The USPTO requires that any intent to use trademark application include evidence of a good faith and bona fide intent for commercial use. A sworn statement to this effect will serve as proof but there should be some other written proof of intent such as emails or a business plan. Third parties can still take legal action if they doubt your claim, though, so it’s advisable to hold onto records proving your intent (e.g. research and development, market research).
Survive Opposition Period
Once an examining trademark attorney approves your application for publication, it will be published in the Official Gazette for a 30-day opposition period. Any third party with a legitimate interest in your registration – meaning they’d be negatively affected by its approval – can file a Notice of Opposition.
In doing so, they’re presenting the argument that your trademark registration should be denied. Third parties can also request extensions to file these notices. This can increase the amount of time necessary to get registered, but only around 3 percent of cases reach the final decision phase of the TTAB.
Engage in Commercial Use
Once a Notice of Allowance issues, you have six months to engage in sufficient commercial use. There are no concrete rules on what constitutes ‘sufficient’ in these situations. Federal courts deciding trademark infringement cases, however, have previously found that single shipments or sales may not qualify.
To avoid rejections or future litigation, it’s important that your use in commerce is legitimate and with intent to build a brand. Minimal or token commercial use in order to gain registration or ‘squat’ on a trademark is not allowed.
Submit Statement of Use
Once you’ve engaged in sufficient commercial use, you’ll need to submit a statement of use. This is a declaration that you’ve now met the use in commerce requirement of the USPTO. Your submission will need to include specimens of use which are evidentiary specimens showing the trademark in use. Acceptable specimens of use may differ based on whether you’ve filed for a trademark or service mark and the classes of goods or services involved.
Respond to Office Actions
During the review of your trademark application, an examining trademark attorney may have concerns with your submission. If so, they’ll send out an Office Action detailing the issues with your application or statement of use. You’ll need to address these matters before moving forward and if you do not timely respond your application will abandon.
File Maintenance Documents
If you engage in appropriate commercial use following your Notice of Allowance, your trademark will register. While your trademark can last indefinitely, you’ll need to occasionally file trademark renewals to keep the registration active. Failing to do this will also result in trademark abandonment.
Proving Use in Commerce to Examining Trademark Attorney
Submission of a Statement of Use following your Notice of Allowance is done directly on the Trademark Electronic Application System (TEAS). Creating appropriate evidentiary specimens can be a bit tricky due to the USPTO’s rules for specimens. If you submit evidence of the following items featuring your trademark, though, acceptance and registration is likely.
Each of the photos, screenshots or documents you submit as evidence of the following items must show a direct link between the brand and trademark.
Specimens for Goods
- The trademark on the physical goods.
- Labels or tags affixed to product.
- Product packaging.
- Signs used as sale displays.
Specimens for Services
- Webpages offering the services.
- Printed or online advertising.
If you fail to engage in any of these legitimate commercial uses, you must file an extension request within six months of your Notice of Allowance issuance. Any subsequent extension requests will need to be submitted prior to the previous extension’s expiration.
USPTO Notice of Allowance Timeline
The following is a basic timeline of what you’ll experience when filing for an Intent to Use Trademark:
- Receipt: You’ll typically receive a receipt for your application as soon as it’s submitted.
- Sent to examining trademark attorney: Your assigned examiner will usually receive your application within four months.
- Publication: Within a month of receiving your application, the examining trademark attorney will publish it for opposition or issue an office action.
- Notice of Allowance issued: If no oppositions are raised, it usually takes about 3 months following publication to receive your notice of allowance.
- Use in commerce: The length of time required for commercial use will depend on you. You have six months to submit a Statement of Use or extension request.
- Review of Statement of Use: It usually takes about a month for the trademark office to process a statement of use.
- Registered trademark: After the statement of use is processed, the registration will issue in about 3 months.
The necessary maintenance documents need to be submitted 5-6 years following registration and then again 9-10 years after being registered. Further maintenance documents are only required every 10 years after this. This timeline is a best-case scenario that doesn’t include Office Actions or oppositions – which can extend your registration period.
We are experts in filing and prosecuting trademark applications. If you would like our assistance, please contact us.