SOU extensions for trademarks that are allowed

SOU extensions for trademarks that are allowed

  • 31 May, 2024
  • Nyall Engfield

SOU Extensions

An SOU (Statement of Use) extension for a trademark can be a valuable tool for businesses and individuals seeking to secure their trademark rights while navigating the complexion registration process. In the realm of intellectual property, timing is often crucial, and the ability to extend the deadline for filing an SOU can provide much-needed flexibility and peace of mind.

The process of obtaining a trademark registration typically involves two distinct stages: filing an initial application and, subsequently, submitting evidence of actual use of the mark in commerce, known as the Statement of Use (SOU). The SOU is a crucial step in the registration process, as it demonstrates that the mark is being actively used in connection with the goods or services specified in the application.

Trademark allowed, but the trademark is not yet in use

However, there may be instances where the applicant is unable to meet the initial deadline for filing the SOU, which is typically six months from the date the Notice of Allowance is issued by the United States Patent and Trademark Office (USPTO). In such cases, the USPTO provides the option to request an extension of time to file the SOU, commonly referred to as an SOU extension.

There are several legitimate reasons why an applicant might need to request an SOU extension. For example, a product launch or service rollout may have been delayed due to unforeseen circumstances, such as supply chain disruptions, regulatory hurdles, or unexpected market conditions. In other cases, the applicant may require additional time to gather sufficient evidence of use, such as product samples, marketing materials, or sales records.

Regardless of the specific circumstances, the ability to request an SOU extension can be invaluable for trademark applicants, as it allows them to maintain their place in line for registration while addressing any obstacles or challenges that may have arisen during the process.

To request an SOU extension, the applicant must file a formal request with the USPTO, along with the required fees. The request must be submitted prior to the expiration of the initial six-month deadline for filing the SOU. The USPTO typically grants an initial six-month extension upon request, provided that the necessary fees are paid and the request is timely filed.

If additional time is required beyond the initial six-month extension, the applicant may request further extensions in six-month increments, up to a maximum of three years from the issuance of the Notice of Allowance. However, it's important to note that each subsequent extension request may be subject to additional fees and stricter requirements, such as providing a valid reason for the continued delay and evidence of ongoing efforts to use the mark in commerce.

One of the primary benefits of an SOU extension is the preservation of the applicant's priority rights. By maintaining the original filing date of the application, the applicant can effectively "reserve" their place in line for registration, which can be particularly advantageous in cases where multiple parties are seeking to register similar marks.

Additionally, an SOU extension can provide the applicant with valuable time to resolve any potential issues or obstacles that may have arisen during the registration process. This could include addressing objections raised by the examining attorney, resolving conflicts with prior marks, or addressing any other legal or administrative challenges that may have emerged.

However, it's important to note that an SOU extension is not a panacea for all trademark-related challenges. While it can provide additional time for the applicant to prepare and submit the required evidence of use, it does not absolve the applicant from ultimately demonstrating that the mark is being used in commerce in connection with the goods or services specified in the application.

Risks to repeatedly extending the SOU

Furthermore, there are potential risks associated with repeatedly extending the SOU deadline, as this may raise concerns about the applicant's genuine intent to use the mark in commerce. Excessive or unjustified extensions could potentially lead to the application being denied or subjected to additional scrutiny by the USPTO.

To mitigate these risks, it's crucial for applicants to carefully consider their reasons for requesting an SOU extension and to provide sufficient justification and evidence to support their requests. Additionally, applicants should maintain clear and detailed records of their efforts to use the mark in commerce, as well as any obstacles or challenges encountered during the process.

Attorney guidance

In some cases, it may be advisable for applicants to seek the guidance and counsel of experienced trademark attorneys or legal professionals when navigating the SOU extension process. These professionals can provide valuable insights and strategies for ensuring compliance with USPTO regulations and maximizing the chances of a successful trademark registration.

Overall, the ability to request an SOU extension can be a valuable tool for trademark applicants, providing much-needed flexibility and breathing room in the registration process. By understanding the requirements, benefits, and potential risks associated with SOU extensions, applicants can make informed decisions and take proactive steps to protect their valuable intellectual property rights.

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