Statement of Use Extensions: How Many Can You File?

The SOU Extension Framework

When a trademark application filed under Section 1(b) (intent-to-use) receives a Notice of Allowance, the applicant has six months to file a Statement of Use demonstrating that the mark is now being used in commerce. If the applicant is not yet using the mark, the alternative is to file an extension request — buying additional time to begin use and prepare the required specimens.

The extension system is generous by design. Congress recognized that applicants filing intent-to-use applications may need time to bring products to market, launch services, or complete other business preparations before actual use begins. The extension framework provides up to 36 months of total time from the issuance of the Notice of Allowance, structured as an initial six-month period followed by up to five six-month extensions.

However, the system is also strict. Each extension must be filed before the current period expires. Missing a single deadline — by even one day — results in abandonment of the application. There is no automatic grace period, no courtesy reminder from the USPTO, and no ability to extend beyond the maximum. The extension chain is a series of hard deadlines, and each one must be met.

After the Notice of Allowance: The First Six Months

The clock starts when the USPTO issues the Notice of Allowance. From that date, the applicant has six months to take one of two actions:

File a Statement of Use. If the mark is now in use in commerce for the goods or services identified in the application, the applicant files a Statement of Use with specimens showing actual use. The filing fee is currently $100 per class. If the SOU is accepted, the application proceeds to registration.

File an extension request. If the mark is not yet in use, the applicant files a request for an extension of time to file the Statement of Use. The fee is $125 per class. The extension grants an additional six months.

If neither a Statement of Use nor an extension request is filed within the initial six-month period, the application is abandoned. The applicant receives a notice of abandonment, and while a petition to revive may be available for unintentional delays, the better practice is to never reach that point.

Extension Requests: The Details

Each extension request must include the following:

A verified statement of ongoing good faith intent to use the mark. The applicant must declare, under oath or declaration, that it has a bona fide intention to use the mark in commerce. This is not a formality — it is a substantive requirement. An applicant that has no genuine intention to use the mark is not entitled to extensions and risks the entire application on grounds of fraud if the lack of intent is discovered.

A statement of ongoing efforts to make use of the mark. Beginning with the second extension request (the request that would extend the deadline beyond 12 months from the Notice of Allowance), the applicant must also explain what steps are being taken to begin use. This might include product development activities, marketing preparation, regulatory approvals, manufacturing arrangements, or other concrete steps toward commercialization.

The extension fee. Currently $125 per class for each extension request. For a three-class application, each extension costs $375.

Maximum Extensions: Five Requests, 36 Months Total

The maximum number of extension requests is five. Combined with the initial six-month period, this provides a total of 36 months from the date the Notice of Allowance was issued. Here is the complete timeline:

• Initial period: 6 months from NOA — file SOU or first extension
• First extension: Months 6-12 — file SOU or second extension
• Second extension: Months 12-18 — file SOU or third extension
• Third extension: Months 18-24 — file SOU or fourth extension
• Fourth extension: Months 24-30 — file SOU or fifth extension
• Fifth extension (final): Months 30-36 — file SOU (no further extensions available)

After the fifth extension, there are no more extensions available. The Statement of Use must be filed before the 36-month deadline expires, or the application is abandoned. There is no sixth extension, no special petition, and no waiver of this limit. Thirty-six months is the absolute maximum.

Total Cost of the Full Extension Chain

For applicants who use all five extensions, the costs add up. Here is the total extension cost per class:

• Extension fee per request: $125 per class
• Number of extensions: 5
• Total extension cost per class: $625
• SOU filing fee: $100 per class
• Total per class (extensions + SOU): $725

For a three-class application using all five extensions, the total cost for extensions and the SOU filing alone is $2,175 — not including attorney fees for preparing the extension requests and the eventual Statement of Use. This is a significant investment, and it underscores the importance of realistic planning when filing intent-to-use applications.

Note that these fees are the USPTO's filing fees as of the time of writing. The USPTO adjusts fees periodically, and the current schedule should always be verified before filing.

What Happens When Extensions Run Out

If the applicant has used all five extensions and still cannot file a Statement of Use by the 36-month deadline, the application is abandoned. The consequences are significant:

No revival for failure to use. While petitions to revive are available for procedurally missed deadlines (such as failing to file an extension request on time due to an administrative error), there is no mechanism to extend beyond 36 months simply because the applicant has not yet begun using the mark. The 36-month limit is a substantive statutory cap, not a procedural deadline.

Loss of filing date priority. The abandoned application's filing date cannot be recaptured. If the applicant later files a new application, it will receive a new filing date — and any marks filed or used by third parties in the interim may create obstacles that did not exist when the original application was filed.

Sunk costs. All filing fees, extension fees, and attorney fees invested in the application are lost. For a multi-class application that used all five extensions, this can represent thousands of dollars in fees alone.

No partial SOU. If the applicant is using the mark for some but not all classes, a partial Statement of Use can be filed for the classes where use has begun. The remaining classes can continue to receive extensions (up to the five-extension maximum). This is an important strategic option — it allows the applicant to secure registration for some classes while continuing to work toward use in others.

Strategy: When to File SOU vs. Request an Extension

The decision between filing a Statement of Use and requesting another extension should be guided by two considerations:

Is the mark actually in use? If the mark is being used in commerce for the identified goods or services and proper specimens are available, file the SOU. There is no strategic benefit to delaying registration. Every month without registration is a month without the full benefits of federal registration, including nationwide constructive notice, the presumption of validity, and access to federal court.

Are the specimens ready? Even if the mark is in use, the SOU requires specimens that meet the USPTO's requirements. For goods, specimens must show the mark as actually used on the goods, packaging, labels, or tags. For services, specimens must show the mark used in advertising or rendering of the services. If the specimens are not ready — for example, if the product packaging is still being finalized — an extension may be appropriate to ensure the SOU is filed with proper specimens rather than risk a refusal.

What should not drive the decision is a desire to delay for competitive reasons or to hold the filing date without genuine intent to use. The extension system requires good faith intent to use, and the requirement to describe ongoing efforts (starting with the second extension) is designed to ensure that extensions are used for their intended purpose — giving applicants time to begin use, not time to sit on a filing date indefinitely.

How DeadlineDocket Tracks Extension Chains

DeadlineDocket tracks the entire extension chain from the Notice of Allowance through each extension request to the eventual Statement of Use filing. When a Notice of Allowance event appears in the TSDR prosecution history, the system automatically generates the initial six-month SOU deadline.

As extension events appear in TSDR, the system updates the chain — recording which extension number has been filed, calculating the next deadline, and displaying how many extensions remain. The attorney can see at a glance whether the application is on its first extension or its fifth, how many months remain in the 36-month window, and when the next action is due.

This chain tracking is particularly valuable for firms managing multiple intent-to-use applications simultaneously. Each application may be at a different point in its extension chain, and manually tracking which extension each application is on — and when the next one is due — is error-prone. The system handles this automatically, ensuring that no extension deadline is missed and no application is inadvertently abandoned.

After the SOU is filed, the system monitors TSDR for acceptance or additional office actions. The journey from Notice of Allowance to registration can involve multiple steps, and automated tracking ensures that every step is captured and every deadline is met.