All federal trademarks come with deadlines for filing of documents. This is true for applications and registered trademarks.
Intent to Use Applications (“1b”)
We left off at Time Point 4 and the Published for Opposition phase of your Application. You have more steps to take then the Use based filing of 1a’s.
After your Opposition Period of 30 days has run the USPTO will issue a Notice of Allowance within 2 month. This Notice of Allowance is the key to getting your Registered trademark someday.
What this Notice does is it allows you a set time frame in which you have to either; 1- file an Extension of Time to submit your Statement of Use or 2- File your Statement of Use.
Time Point 4.1- You have 6 months from the time the USPTO issues the Notice of Allowance to file your Extension or Use Statement.
Time Point 4.1.2 through 7 You can continue to do this every 6 months from the time the USPTO issues the Notice of Allowance to file your Extension or Use Statement for a total time of 3 years. After the 3 years you have to be using your trademark in Commerce or you will lose your trademark.
If at anytime you fail to file your Extension or Use Statement during the 3 year time frame the USPTO will issue an Abandonment Notice for Failure to file an Extension or Use Statement.
Time Point 4.2- You have 2 months from the time the USPTO issues the Abandonment Notice for Failure to file an Extension or Use Statement to Revive your trademark Application for a $100 revival fee to continue processing your Application.
Once you have begun to use your trademark in Commerce you will submit your Statement of Use and change your Application from a 1b to a 1a. It will take several more months for the USPTO to look at your Specimen of Use (showing your trademark Use in Commerce), once they do look at your Specimen of Use they will decide if the Specimen meets all of the criteria and do one of two things (sound familiar?) 1- decide the Specimen is super and allow you on to Registration (go back to the other page and continue to Time Point 5) or 2- issue an Office Action declaring some issue with your Specimen.
Time Point 4.3- You have 6 months from the USPTO issuing an Office Action to respond to their request (just like in Time Point 1).
At some point in time you will have complied with everything that the USPTO wants you to do and you will proceed to the Principal or Supplemental register.
“We Bug you” is our motto for a reason. We REALLY doubt that you can claim “I didn’t know” on any of your Time Points ever again.