The trademark application process involves several key milestones, one of which is the Trademark Notice of Allowance (NOA). If you’ve received this notice from the USPTO, your trademark journey is moving forward, but there are still crucial steps to take to ensure your mark is fully registered. In this post, we’ll explain what the Trademark Notice of Allowance is, when it’s issued, and what you need to do next, including why conducting a comprehensive trademark search before filing is essential.
A Trademark Notice of Allowance (NOA) is an official written notice from the United States Patent and Trademark Office (USPTO) indicating that your trademark application has passed the examination phase and has been published in the Official Gazette without opposition.
However, it’s important to note that this doesn’t mean your trademark is fully registered yet.
When you applied for a trademark based on intent to use (ITU), the NOA indicates that your Statement of Use (SOU) is due within six months. This document confirms you’ve started using the mark in commerce with the goods or services listed in your application. If you aren’t yet using your trademark in commerce, you can request a six-month extension to file your SOU.
Want to read more about the Statement of Use? Check out our post – The Roadmap to Trademark Statement of Use Success
Before reaching this point in the process, the USPTO examines your application, comparing your trademark to others registered in the federal system. However, the USPTO’s search is limited to federally registered marks, and they do not search state trademarks or common law uses.
It typically takes nearly eight months to reach the USPTO search phase in the examination process, making a thorough trademark search before filing vital to uncover potential conflicts and avoid the costly setbacks of application rejection or abandonment.
This is why conducting a comprehensive trademark search before filing your application is critical to avoid costly conflicts down the line.
A comprehensive search is not just about running a search in the USPTO’s database. Although the Trademark Electronic Search System (TESS) is publicly available, using it effectively requires more than basic knowledge.
Searching for conflicts involves understanding similarities in sound, appearance, and meaning, as well as evaluating related goods or services. Without the experience and know-how of how to interpret these results, you could miss crucial issues that might lead to rejection or legal disputes.
If you’ve received a Trademark Notice of Allowance, it means your trademark has cleared the publication stage and is ready for the next step. Because NOAs are only issued for intent-to-use applications, this means you must now provide proof that your trademark is being used in commerce.
There are two key actions you can take:
A Statement of Use is a written submission to the USPTO that confirms you’ve started using your trademark with the goods or services in your application. It’s an allegation of use that must include a specimen (proof) showing your trademark in actual commerce for each class of goods or services. You have six months from the issuance of the NOA to file the SOU, and the fee is $150 per class.
If you aren’t yet using your trademark in commerce, you can request a six-month extension to file your SOU. The fee for this is $125 per class, and you can file up to five extensions, but each must be filed within an unexpired extension period. This means you have the possibility of extending the deadline for up to 30 months total from the date of the NOA.
Failure to respond to the Notice of Allowance by filing a Statement of Use or requesting an extension will result in your application becoming abandoned.
This can be a significant setback, especially after you’ve invested time and resources in the application process.
If your application is abandoned, you can file a Petition to Revive, which costs $250, but this is an extra step and expense that can be avoided by staying on top of deadlines.
Conducting a comprehensive trademark search before filing your application is one of the most important steps in the trademark process. Without this thorough search, you could be blindsided by the discovery of a similar mark already in use—often after months of waiting. The trademark application process can be lengthy, taking up to a year or more to complete, so it’s essential to minimize risks from the start.
A professional trademark search doesn’t just look at federal trademarks. It covers state trademarks and common law databases, which includes business name directories, and other local uses. Many businesses make the mistake of skipping this step and later face costly conflicts.
A comprehensive search also examines similarities in sound, appearance, and meaning while also considering relatedness of goods or services. For example, goods or services could be related if they are identical, competitive, used together, share the same customer base, advertised together, or sold by the same company.
Let’s imagine Sarah, an ambitious entrepreneur launching a trendy clothing line called “Urban Serenity.” After months of hard work, she files for a trademark, believing her name is unique. Skipping the crucial step of a comprehensive trademark search, she invests her heart and resources into marketing and packaging.
Just before her major product launch, she receives devastating news: a cease and desist from a competitor using a similar name, “Urban Serene,” under common law. Although they never registered their trademark, their market presence blocks Sarah’s application. Forced to abandon her trademark and halt production, she faces mounting costs for new packaging and marketing, straining her finances. The emotional toll is profound—months of effort wasted, and she must start over with a new name.
Had Sarah conducted a thorough trademark search initially, she could have uncovered the conflict and avoided these painful setbacks.
The Trademark Notice of Allowance is a significant step in the trademark registration process, but it requires timely action. Whether you need to file a Statement of Use or request an extension, staying on top of these deadlines is crucial to avoid abandoning your application. Equally important is conducting a thorough trademark search before filing, ensuring that your application is not met with conflicts months down the road.
For expert assistance with trademark searches, filings, or navigating the entire trademark process, TradeMark Express is here to help.
Contact us today to safeguard your brand’s future.
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