Extensions of Time to File a Declaration of Use

Publication Date: 1998-07-15

Six month extension

The Office currently grants extensions of time of six months upon the expiration of the time limit to file a declaration of use if the request is justified and the prescribed fee of $125 is paid.

As of April 14, 1998, on the first request for an extension of time or any subsequent one, if a reason is not provided that would justify the extension of time, the Office will refuse the extension of time and allow the applicant two months to further respond.

One year extension

The Office currently grants extensions of time of one year where the request for an extension of time is based on a situation in which the applicant requires a type of government approval before use of the trademark can begin.

As of April 14, 1998, on the first request and on any subsequent one, if the request is based on awaiting approval from a government department, the Office will require specifics of the government department from which the applicant is seeking approval.

Significant and Substantive Reasons

The Office Practice Notice published in the Trademarks Journal January 28, 1998, February 4, 1998, February 11, 1998 and February 18, 1998, stated that the Office will require significant and substantive reasons to support a request for an extension of time that extends beyond the period of 3 years from the original deadline to file a declaration of use. The determination of whether a reason is significant and substantive will be decided on an individual basis by the Manager of the Declaration and Registration Section and the Assistant Director, Trademarks Branch.

3rd Party Intervention

As discussed at the Trademarks Joint Liaison Committee on September 22, 1997 it was agreed that any correspondence from third parties would be returned in view of the provisions of section 8 of theTrade-marks Regulations (1996): Correspondence relating to the prosecution of an application for the registration of a trademark shall be with the applicant or its agent.

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