Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), provides that an applicant may file an application based on a bona fide intention to use a mark in commerce “under circumstances showing the good faith of such person.”

A verified statement of the applicant’s bona fide intention to use the mark in commerce must be included in intent-to-use applications under §1(b), and in applications under §§44 and 66(a), 15 U.S.C. §§1126 and 1141f(a). See TMEP §1904.01(c) regarding the requirement for a declaration of the applicant’s bona fide intention to use the mark in commerce in a §66(a) application.

If the verification is not filed with the initial application, the verified statement must allege that the applicant has had a bona fide intention to use the mark in commerce since the filing date of the application. 37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i) and 2.34(a)(4)(ii). See TMEP §§804 et seq. regarding verifications.

A verified statement of the applicant’s continued bona fide intention to use the mark in commerce must be included in a request for an extension of time to file a statement of use. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3) and (b)(3); TMEP §§1108.02 and 1108.02(e).

Reasonable variations in the wording of the statement may be acceptable. For example, the applicant may state that it has “a bona fide intention to use in commerce the mark on or in connection with...,” or may use the words “good faith” instead of “bona fide.” However, the wording “in commerce” is required and cannot be varied. In re Custom Technologies Inc., 24 USPQ2d 1712 (Comm’r Pats. 1991); In re B.E.L.-Tronics Ltd., 24 USPQ2d 1397 (Comm’r Pats. 1991).

See TMEP §1201.03(a) regarding an assertion by an intent-to-use applicant of a bona fide intention to use the mark in commerce through a related company.

See TMEP §1008 regarding the requirement for an allegation of a bona fide intention to use the mark in commerce in an application filed under §44 of the Trademark Act.

The Office will not evaluate the good faith of an applicant in the ex parte examination of applications. Generally, the applicant’s sworn statement of a bona fide intention to use the mark in commerce will be sufficient evidence of good faith in the ex parte context. Consideration of issues related to good faith may arise in an inter partes proceeding, but the Office will not make an inquiry in an ex parte proceeding unless evidence of record clearly indicates that the applicant does not have a bona fide intention to use the mark in commerce.

1102 Initial Examination of Intent-to-Use Applications

In an intent-to-use application, the examining attorney will potentially examine the application twice: first, when it is initially filed based on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b), and second, when the applicant files an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d). After receipt of the application, the examining attorney will initially examine the application to determine whether the mark is eligible for registration but for lack of evidence of use. If the mark is determined to be eligible, the mark will be approved for publication and published for opposition. If the applicant has not submitted an amendment to allege use before approval for publication, and the application is not successfully opposed, the Office will issue a notice of allowance. 15 U.S.C. §1063(b); 37 C.F.R. §2.81. In such a case, the applicant must submit a statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88.

The intent-to-use application is subject to the same requirements and examination procedures as other applications, except as specifically noted. The examining attorney must raise all possible issues in initial examination, without regard to whether the applicant will file an amendment to allege use or statement of use.

1102.01 Substantive Refusals

To the fullest extent possible, the examining attorney will examine an intent-to-use application for registrability under Trademark Act §§1, 2(a), 2(b), 2(c), 2(d), and 2(e), 15 U.S.C. §§1051 and 1052(a), (b), (c), (d), and (e), according to the same procedures and standards that apply to any other application. That is, the examining attorney must make all appropriate refusals with respect to issues such as ownership, deceptiveness, mere descriptiveness, geographic significance, and surname significance. In re Bacardi & Co. Limited, 48 USPQ2d 1031 (TTAB 1997); In re American Psychological Association, 39 USPQ2d 1467 (Comm’r Pats. 1996). The examining attorney cannot issue a requirement or refusal under these sections during examination of the statement of use if the issue could or should have been raised during initial examination, unless the failure to issue the refusal or requirement would be a clear error. See TMEP §1109.08.

Where a significant length of time has elapsed since the initial examination, a mark may have become descriptive or even generic as applied to the goods or services. In such a case, since the evidence of the descriptive or generic use would not have been available during initial examination, the refusal may be issued during second examination.

The examining attorney should investigate all possible issues regarding registrability through all available sources. If appropriate, the examining attorney may request that the applicant provide literature or an explanation concerning the intended manner of use of the mark under 37 C.F.R. §2.61(b). See In re DTI Partnership LLP, 67 USPQ2d 1699 (TTAB 2003); In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).

The examining attorney should also search the applicant’s own website to see if it provides information about the goods and services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (“[T]he fact that applicant has filed an intent-to-use application does not limit the attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession.”).

While the examining attorney must examine and act on all possible issues in the initial examination of the application, refusals specifically tied to use of the mark (e.g., ornamentation) should generally be addressed after the applicant submits an amendment to allege use or statement of use and a specimen. See TMEP §§1202 et seq. regarding use as a mark. However, in a §1(b) application for which no specimen has been submitted, if the examining attorney believes that a refusal of registration on the ground that the subject matter does not function as a mark may be made after an allegation of use is submitted, this potential refusal should be brought to the applicant’s attention in the first action issued by the Office. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the Office is not precluded from refusing registration on this basis.

1102.02 Drawings

The examination of the drawing during initial examination, before submission of an allegation of use and specimen, will focus primarily on the form of the drawing and compliance with 37 C.F.R. §§2.52, 2.53 and 2.54. Intent-to-use applicants must comply with all formal requirements related to drawings, whether in standard characters or in special form. See TMEP §§807 et seq. See TMEP §1104.09(f) regarding the examination of the drawing after submission of an amendment to allege use, and TMEP §1109.12 regarding the examination of the drawing after submission of a statement of use. The applicant may not amend the mark in a drawing if the amendment constitutes a material alteration of the mark. 37 C.F.R. §2.72(b)(2).

1102.03 Intent-to-Use Applications and the Supplemental Register

An applicant who relies on a bona fide intention to use the mark in commerce under §1(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable allegation of use, i.e., an amendment to allege use that meets the requirements of 37 C.F.R. §§2.76(b) and (c), or a statement of use that meets the requirements of 37 C.F.R. §2.88(b). 37 C.F.R. §§2.47(d) and 2.75(b).

If an intent-to-use applicant requests registration on the Supplemental Register before filing an acceptable allegation of use, the examining attorney will refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. If an application is based on intent-to-use in addition to another basis, registration of the entire application will be refused on the Supplemental Register, unless the applicant either deletes the §1(b) basis or files a request to divide. See TMEP §§1110 et seq. regarding requests to divide. The examining attorney will withdraw the refusal if the applicant submits an acceptable allegation of use.

If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use and an acceptable amendment to the Supplemental Register, the Office will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b); TMEP §206. 01. The filing date of an amendment to allege use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.76(e), and the filing date of a statement of use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.88(e). The examining attorney must conduct a new search of Office records for conflicting marks. In this situation, the Office does not alter the original filing date in its automated records. TMEP §206.

When the applicant files an allegation of use together with an amendment to the Supplemental Register, the examining attorney must examine the allegation of use before taking action on the amendment to the Supplemental Register.

See TMEP §§815 and 816 et seq. for additional information about the Supplemental Register.

1102.04 Claims of Acquired Distinctiveness under §2(f)

See TMEP §§1212.09 et seq. regarding claims of distinctiveness under §2(f), 15 U.S.C. §1052(f), in intent-to-use applications.

1103 Allegations of Use

While §1(b) of the Trademark Act provides for filing an application based on the applicant’s bona fide intent to use the mark in commerce, registration cannot be granted until the applicant files an allegation of use (i.e., either an amendment to allege use under §1(c) of the Act or a statement of use under §1(d) of the Act). The allegation of use must include verified dates of first use (see TMEP §903), and a specimen of use for each class of goods or services (see TMEP §§904 et seq.).

The allegation of use can be filed electronically using the Trademark Electronic Application System (“TEAS”), available at http://www.uspto.gov/teas/index.html. Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a form (“Trademark/Service Mark Allegation of Use”) that can be used to file either an amendment to allege use or a statement of use via mail, fax or hand delivery.

The principal difference between the amendment to allege use and the statement of use is the time of filing. The amendment to allege use may be filed after the application filing date but before approval of the mark for publication. 37 C.F.R. §2.76(a); TMEP §1104.03. If the applicant does not file an acceptable amendment to allege use during initial examination, or if an amendment to allege use is filed and withdrawn, and the Office issues a notice of allowance under 15 U.S.C. §1063(b)(2) (see TMEP §§1106 et seq.), the applicant must file a statement of use within six months of the mailing date of the notice of allowance, or within an extension of time granted for filing of the statement of use. 15 U.S.C. §1051(d). See TMEP §§1109 et seq. regarding statements of use.

The applicant may not file the allegation of use during the period after approval of the mark for publication and before issuance of the notice of allowance. 37 C.F.R. §2.88(a); TMEP §1104.03.

1104 Amendment to Allege Use Under §1(c) of the Act

As previously stated, an intent-to-use applicant must file either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) before issuance of the registration. This section pertains only to amendments to allege use. Statements of use are discussed in TMEP §§1109 et seq.

Filing an amendment to allege use does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in the case, including filing a notice of appeal. 37 C.F.R. §2.64(c)(1). See TMEP §1104.07 regarding the filing of an amendment to allege use in conjunction with an appeal.

1104.01 Minimum Requirements for Filing an Amendment to Allege Use

The amendment to allege use must include the following minimum elements to be referred to the examining attorney for examination on the merits:

(1) the prescribed fee for at least one class;

(2) one specimen or facsimile of the mark as used in commerce; and

(3) a verification or declaration signed by the applicant stating that the mark is in use in commerce.

37 C.F.R. §2.76(e).

An amendment to allege use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. §2.76(e)(3) for a verified statement that the mark is in use in commerce. Cf. In re Carnicon Development Company, 34 USPQ2d 1541 (Comm’r Pats. 1992); In re Conservation Technology Inc., 25 USPQ2d 1079 (Comm’r Pats. 1992). The examining attorney will require an allegation that the “mark is in use in commerce” during examination.

See TMEP §1104.08 regarding the necessary elements in a complete amendment to allege use.

1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements

A legal instruments examiner (“LIE”) will conduct a preliminary review of an amendment to allege use to determine whether it is timely and complies with the minimum requirements of 37 C.F.R. §2.76(e). With respect to the requirement that the amendment to allege use include a verification or declaration signed by the applicant stating that the mark is in use in commerce, the LIE will review the document only to determine whether it bears a signed verification stating that the mark is in use in commerce. If the amendment to allege use is timely and complies with the minimum requirements, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits. See TMEP §§1104.09 et seq. regarding examination by the examining attorney. The examining attorney will determine whether the amendment to allege use is filed in the name of the proper party.

See TMEP §1104.01(b) regarding processing an amendment to allege use that does not meet minimum filing requirements, and TMEP §1104.03(c) regarding processing an untimely amendment to allege use.

1104.01(b) Processing an Amendment to Allege Use That Does Not Meet Minimum Filing Requirements

If an amendment to allege use is timely, but does not comply with the minimum requirements of 37 C.F.R. §2.76(e) (see TMEP §1104.01), the LIE will advise the applicant in writing of the deficiency. The applicant may correct the deficiency, provided the applicant does so before the mark is approved for publication. See 37 C.F.R. §2.76(g). If an acceptable amendment to correct the deficiency is not filed before the mark is approved for publication, the amendment to allege use will not be examined. 37 C.F.R. §2.76(g).

If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, if an electronic funds transfer (“EFT”) or credit card payment is refused or charged back by a financial institution, or if a check is returned unpaid), the LIE will advise the applicant that the applicant must repay the fee before the mark is approved for publication, or the amendment to allege use will not be examined. In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(12). This processing fee must be paid even if the applicant withdraws the amendment to allege use. See TMEP §405.06 regarding payments that are refused.

If the amendment to allege use does not include a specimen, the LIE will advise the applicant that the applicant must submit a specimen, supported by an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen is in use in commerce on or in connection with the goods/services, before the mark is approved for publication, or the Office will not examine the amendment to allege use.

If the amendment to allege use is not signed, the LIE will advise the applicant that the applicant must submit a properly signed amendment to allege use before the mark is approved for publication, or the Office will not examine the amendment to allege use.

An amendment to allege use that does not meet the minimum filing requirements will remain in the record. If the applicant does not correct all deficiencies before approval of the mark for publication, the examining attorney will not examine the amendment to allege use. In such a case, if the applicant has submitted the fee, the fee will not be refunded and cannot be applied to a later-filed statement of use. If the mark is published for opposition and a notice of allowance issues, the applicant must file a statement of use or request for extension of time to file a statement of use to avoid abandonment of the application.

If the applicant wishes to establish that the amendment to allege use as filed met the minimum requirements of 37 C.F.R. §2.76(e), the applicant must file a petition under 37 C.F.R. §2.146. In addition to the petition fee (37 C.F.R. §2.6), the petition should include a copy of the amendment to allege use and specimen, and any evidence establishing that the amendment to allege use as filed met the minimum filing requirements. See Chapter 1700 for additional information about petitions. If the petition is granted, the amendment to allege use will be considered filed on the date it was originally received in the Office.

See TMEP §1104.03(c) regarding processing an untimely amendment to allege use.

1104.01(c) Processing Defective Amendment to Allege Use Filed With Other Amendments

After the LIE has taken appropriate action on a defective amendment to allege use (see TMEP §1104.01(b)), the LIE will process any other amendments filed with the amendment to allege use and will refer the application to the assigned examining attorney for appropriate action on those other amendments.

If the amendment to allege use did not meet the minimum requirements of 37 C.F.R. §2.76(e), the examining attorney will act on any other amendments in the case without considering the amendment to allege use. The examining attorney should issue requirements or refusals according to standard examination procedure without considering the amendment to allege use. Any specimen submitted becomes part of the record and may be relied on in relation to issues unrelated to use.

If the examining attorney determines that the LIE erred in holding that the amendment to allege use did not meet the minimum requirements of 37 C.F.R. §2.76(e), the examining attorney should advise the applicant by telephone or e-mail that the amendment to allege use will be examined on the merits and to disregard the LIE’s action, and should make an appropriate note to the file.

1104.02 Form of Amendment to Allege Use

To expedite processing, the Office recommends that an applicant file an amendment to allege use through TEAS, available at http://www.uspto.gov/teas/index.html. Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be used to file either a statement of use or amendment to allege use (“Trademark/Service Mark Allegation of Use”). The applicant may mail, fax or hand-deliver the completed form to the Office. If the form is faxed, it must be accompanied by an authorization to charge the filing fee to a credit card or deposit account. The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf. If the amendment to allege use is filed though TEAS, payment must be made by credit card, deposit account or EFT.

If the applicant does not file electronically or use the form designed by the Office, the applicant should submit the amendment to allege use in a document separate from other amendments, with the title “Amendment to Allege Use” appearing at the top of the first page. 37 C.F.R. §2.76(d). However, this format is not mandatory. The Office will accept and enter any paper that includes an amendment to allege use if it meets the minimum filing requirements set forth in 37 C.F.R. §2.76(e), regardless of whether it is properly titled or includes other amendments. The Office will process the form even if it is captioned as a “Statement of Use,” as long as it is filed before the examining attorney approves the mark for publication.

See TMEP §1104.01 regarding the minimum requirements that must be met before an amendment to allege use can be referred to an examining attorney for examination, and TMEP §1104.08 regarding the necessary elements in a complete amendment to allege use.

1104.03 Time for Filing Amendment to Allege Use

An applicant may file an amendment to allege use at any time between the application filing date and the date the examining attorney approves the mark for publication. 37 C.F.R. §2.76(a).

An amendment to allege use may be filed after commencement of an ex parte appeal. See TMEP §1104.07.

An applicant may not file either an amendment to allege use or a statement of use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance. This period, during which no allegation of use can be filed, is known as the “blackout period.” See TMEP §§1104.03(b) and (c).

1104.03(a) Use on All Goods Required Before Filing

An applicant may not file an amendment to allege use until the applicant has used the mark in commerce on or in connection with all goods/services for which the applicant seeks registration under §1(b), unless the applicant files a request to divide. 37 C.F.R. §2.76(c). If the applicant files an amendment to allege use before using the mark on or in connection with all the goods/services, but does not file a request to divide, the examining attorney will require the applicant to: (1) withdraw the amendment to allege use (see TMEP §1104.10); (2) delete the goods/services not covered by the amendment to allege use from the application; or (3) file a request to divide out the goods/services that are not yet in use. See TMEP §§1110 et seq. regarding requests to divide.

1104.03(b) The “Blackout Period”

Under 37 C.F.R. §2.76(a), an applicant may not file an amendment to allege use under 15 U.S.C. §1051(c) after the date that the application is approved for publication by the examining attorney. Under 37 C.F.R. §2.88(a), an applicant may not file a statement of use under 15 U.S.C. §1051(d) before the issuance of the notice of allowance. These two rules combine to create a period of time when neither an amendment to allege use nor a statement of use can be filed. This period is known as the “blackout period.” Any statement of use or amendment to allege use filed during this period will be deemed untimely and the fee will be refunded. In re Sovran Financial Corp., 25 USPQ2d 1537 (Comm’r Pats. 1991). See TMEP §1104.03(c) regarding processing allegations of use filed during the blackout period.

Intent-to-use applicants are encouraged to check the Trademark Applications and Registrations Retrieval (“TARR”) database on the Office’s website at http://tarr.uspto.gov to determine the status of the application before filing an amendment to allege use.

If the status check indicates that the status of the application is any of the following, then the blackout period is in effect because the mark has been approved for publication and a notice of allowance has not yet issued:

Approved for Publication (by the examining attorney)
Publication/Registration review complete (by the law office clerk)
Published for Opposition
Notice of Allowance—Withdrawn
Notice of Allowance—Cancelled
Withdrawn from publication
Withdrawn from registration—Jurisdiction restored (to the examining attorney)
Withdrawn from registration
Cancelled—Restored to Pendency (indicates subject registration number was issued inadvertently and correction requires restoration of the application to pendency)
Inadvertently issued registration number—Cancelled (indicates the subject registration number was issued inadvertently and has been cancelled)
Concurrent use proceeding terminated—granted
Concurrent use proceeding terminated—denied
Concurrent use proceeding pending
Interference proceeding pending
Interference proceeding terminated
Opposition pending
Opposition dismissed
Opposition dismissed—See TTAB records
Opposition sustained
Opposition instituted
Request for extension of time to file opposition
Amendment after publication

If the reported status is one of those listed above, then the blackout period has begun and the applicant should not file the amendment to allege use. On the other hand, if the reported status is not one of those listed above, the applicant may file the amendment to allege use.

It is possible that the mark could be approved for publication on the same day but shortly after the applicant checks the status of the application. However, the blackout period does not begin until the day after a mark is approved for publication.

1104.03(c) Processing Amendments to Allege Use Filed During the Blackout Period

If an applicant files an amendment to allege use during the blackout period, the Office will notify the applicant that the amendment to allege use is untimely and will not be processed, and refund the filing fee.

The examining attorney should not cancel the approval or withdraw the application from publication to process the untimely amendment to allege use. Furthermore, the examining attorney should not suspend action in the case or take any other similar action to extend the time for filing an amendment to allege use.

The Office will not retain an untimely amendment to allege use and process it as a statement of use. However, the applicant may resubmit an untimely amendment to allege use as a statement of use after the notice of allowance issues. TMEP §1109.05(a).

1104.04 Processing Timely Amendments to Allege Use Located After Publication

If an amendment to allege use is timely (see TMEP §1104.03) and complies with the minimum requirements to be referred for examination on the merits (TMEP §1104.01), but the mark was published for opposition before the amendment to allege use was associated with the file, the Office will proceed as follows.

The examining attorney will contact the applicant or the applicant’s attorney by telephone or e-mail, and give the applicant the opportunity to withdraw the amendment to allege use. The examining attorney should advise the applicant that the application will be withdrawn from publication if the amendment to allege use is not withdrawn.

Amendment to Allege Use Withdrawn

If the applicant withdraws the amendment to allege use, the examining attorney should advise applicant that a notice of allowance will issue if the application is not successfully opposed, and that the applicant must file a statement of use (or request for extension of time to file a statement of use) within six months after the mailing date of the notice of allowance. The examining attorney should advise applicant that, instead of filing a statement of use, the applicant may file a written request that the Office treat the amendment to allege use as a statement of use. Such a request must be filed within six months after the mailing date of the notice of allowance, and should be faxed to the ITU/Divisional Unit of the Office at (571) 273-9550. The examining attorney should make a note to the file reflecting the substance of the communication with the applicant. The filing date of the statement of use will be the date of receipt of the applicant’s request to treat the amendment to allege use as a statement of use.

The applicant has the option of receiving a refund of the filing fee for the amendment to allege use, or applying the fee toward a statement of use. If the applicant requests a refund, the examining attorney should ask a legal instruments examiner to arrange for a refund of the fee.

Because §1(d)(1) of the Trademark Act explicitly requires that a statement of use be filed within six months after the issuance of the notice of allowance, the Office cannot process the amendment to allege use as a statement of use unless the applicant files a written request within six months after the mailing date of the notice of allowance. If the applicant does not file a statement of use, or a written request to treat the amendment to allege use as a statement of use, within six months after the mailing date of the notice of allowance, the application will be abandoned, even if the amendment to allege use is still in the record and the filing fee for the amendment to allege use has not been refunded.

Amendment to Allege Use Not Withdrawn

If the applicant does not withdraw the amendment to allege use, and no notice of allowance has issued, the examining attorney must withdraw the application from publication. If the notice of allowance has issued, the examining attorney must ask the ITU/Divisional Unit to cancel the notice of allowance. The examining attorney should make an appropriate note to the file, and then examine the amendment to allege use. If the amendment to allege use can be approved, and does not raise any issues that require the examining attorney to issue an Office action that requires a response, the examining attorney should approve the amendment to allege use (see TMEP §1104.11). The mark must be republished.

If examination of the amendment to allege use raises issues that would require the examining attorney to issue requirements or refusals in a form other than an examiner’s amendment, the examining attorney should request jurisdiction for the purpose of issuing the relevant requirements or refusals. See TMEP §1504.04(a). The proposed Office action setting forth the relevant requirements or refusals must accompany the request for jurisdiction. If the applicant ultimately complies with all requirements and overcomes all refusals, the mark must be republished.

Applications that are the Subject of an Opposition

If a notice of opposition has been filed when a timely amendment to allege use is associated with the application, the Board will usually suspend the opposition proceeding and remand the application to the examining attorney for examination of the amendment to allege use. The examining attorney should follow the procedures explained above, except that no request for jurisdiction is necessary. If the amendment to allege use is ultimately approved or withdrawn, the application should be referred to the Board for appropriate action. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §219.

Applications that are the Subject of an Extension of Time to Oppose

If the application is under an extension of time to file an opposition when the amendment to allege use is associated with the application, the potential opposer must continue to file further request(s) for extension(s) of time to oppose, or file a notice of opposition, if it wishes to preserve its right to oppose if the amendment to allege use is withdrawn by the applicant or approved by the examining attorney. TBMP §219. The Board will not suspend the potential opposer’s time to file a notice of opposition. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).

1104.05 Amendments to Allege Use Filed in Conjunction With Application

If an applicant files an intent-to-use application under 15 U.S.C. §1051(b), and, at the same time, an amendment to allege use asserting dates of use before the filing date of the application, the applicant will be required to comply with all requirements related to the amendment to allege use, including the payment of the required fees for all classes.

1104.06 Processing Amendments to Allege Use Received Before Application is Assigned to an Examining Attorney

If an amendment to allege use is received before an application has been assigned to an examining attorney, the LIE will review the amendment to allege use to determine whether it complies with the minimum requirements of 37 C.F.R. §2.76(e) and will take appropriate action. See TMEP §§1104.01 et seq.

1104.07 Amendments to Allege Use and Ex Parte Appeals

An amendment to allege use may be filed together with a notice of appeal to the Trademark Trial and Appeal Board, or it may be filed while an appeal is pending.

Once the appeal is filed, the Board has jurisdiction over the application. If the applicant files the amendment to allege use with the notice of appeal, the Board will institute the appeal, suspend action on the appeal, and remand the case to the examining attorney to examine the amendment to allege use. When the applicant files the amendment to allege use after commencement of the appeal, the Board may in its discretion suspend action on the appeal and remand the application to the examining attorney for consideration of the amendment to allege use, or it may continue action on the appeal, thus deferring examination of the amendment to allege use until after disposition of the appeal.

If the Board remands the application, the examining attorney should continue examination according to standard examining procedures until final resolution of any new issues that arise in the examination of the amendment to allege use. If all issues are resolved or made the subject of a final action, the examining attorney should refer the application to the Board for resumption of the appeal. TBMP §1206.01.

If the examining attorney withdraws the refusal or requirement that is the subject of the appeal, he or she should advise the applicant or the applicant’s attorney by telephone or by e-mail, and make an appropriate note to the file.

1104.08 Necessary Elements in a Complete Amendment to Allege Use

The complete amendment to allege use must include the following elements:

(1) a verified statement that the applicant is believed to be the owner of the mark and that the mark is in use in commerce, specifying the date of the applicant’s first use of the mark anywhere and first use of the mark in commerce, and a listing of those goods/services specified in the application on or in connection with which the mark is in use in commerce;

(2) one specimen or facsimile per class of the mark as used in commerce that meets the requirements of 37 C.F.R. §2.56; and

(3) the prescribed fee for each class (37 C.F.R. §2.6).

37 C.F.R. §2.76(b).

1104.09 Examination of Amendment to Allege Use by Examining Attorney

If a timely filed amendment to allege use meets the minimum requirements of 37 C.F.R. §2.76(e) (see TMEP §1104.01), the examining attorney will examine the amendment to allege use, in turn, with other amended cases.

The examining attorney must examine the amendment to allege use for compliance with all relevant sections of the Act. The clear error standard that limits the issues that may be raised in examination of a statement of use (see TMEP §1109.08) does not apply to the examination of an amendment to allege use.

The following sections present examples of issues that should be considered during examination of the amendment to allege use. These sections do not exhaust all possibilities, but rather present a general framework governing the areas for examination.

1104.09(a) Ownership

The examining attorney must confirm that the proper party has filed the amendment to allege use. Only the applicant or a valid assignee under §10 of the Trademark Act, 15 U.S.C. §1060, can file an amendment to allege use.

If the party filing the amendment to allege use is the owner at the time of filing, but the records of the Office show title in another party, the examining attorney must refuse to approve the amendment to allege use, on the ground that it was not filed by the owner. To overcome the refusal, the applicant may submit evidence to establish chain of title within the response period specified in the examining attorney’s Office action. See 37 C.F.R. §§3.71 and 3.73. To establish ownership, the party who filed the amendment to allege use must either: (1) record an assignment or other document of title with the Assignment Services Branch, and include a statement that the document has been recorded in the response to the Office action; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1); TMEP §502.01.

If the party filing the amendment to allege use was not the owner of the mark at the time of filing the amendment to allege use, the examining attorney should not approve the amendment to allege use. The true owner may file a substitute amendment to allege use (including a filing fee) on or before the date the application is approved for publication.

See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of the new owner, and TMEP §502.02(c) regarding an examining attorney’s handling of an application after the mark has been assigned.

1104.09(b) Verification and Date of Execution

The verification should be signed by the applicant or a person properly authorized to sign on behalf of the applicant. 37 C.F.R. §2.76(b)(1). See 37 C.F.R. §2.33(a) and TMEP §804.04 as to who is properly authorized to sign on behalf of an applicant. Generally, the Office will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.

If the amendment to allege use is not filed within one year after it is signed, the examining attorney must require a substitute or supplemental verification or declaration under 37 C.F.R. §2.20 stating that the mark is still in use in commerce. 37 C.F.R. §2.76(i); TMEP §804.03.

See TMEP §804.05 regarding signature.

1104.09(c) Identification of Goods or Services

The examining attorney must examine the identification of goods/services in an amendment to allege use to ensure that it conforms to the goods/services specified in the application. The applicant may limit or clarify the goods/services, but may not add to or expand the identification. 37 C.F.R. §2.71(a). The amendment to allege use must include all the goods/services for which the applicant seeks registration under §1(b). An amendment to allege use cannot be accepted for only some of the goods/services. See TMEP §1104.03(a).

If the applicant has not specified the goods/services in the amendment to allege use, as required by 37 C.F.R. §2.76(b), or if the goods/services specified in the amendment to allege use exceed the scope of the goods/services specified in the application, the examining attorney must require amendment.

In a paper amendment to allege use, if goods/services identified in the application are omitted from the amendment to allege use, but the applicant has not indicated an intention to delete those goods/services from the application or filed a request to divide the application, the examining attorney should confirm that the applicant intends to delete the omitted goods/services. The applicant may amend the amendment to allege use to claim use on or in connection with the goods/services that were omitted, provided that: (1) the applicant did not expressly delete the goods/services; and (2) the applicant verifies that it has used the mark in commerce on or in connection with the goods/services in an affidavit or declaration under 37 C.F.R. §2.20. Inadvertently omitted goods or services may not be reinserted by examiner’s amendment, because verification is required.

If the applicant lists all the goods/services identified in the application in the section of a pre-printed paper amendment to allege use form designated for the identification of goods that are not in use (the effect of which is a representation that the mark was not used in connection with any goods), then the applicant has not expressed an intention to delete these goods/services, and the examining attorney must inquire as to the discrepancy.

Omission of goods/services in a paper amendment to allege use or paper statement of use is the only instance when an applicant may reinsert goods or services. Once expressly deleted, or omitted from the identification of goods/services in a request for an extension of time to file a statement of use, goods or services may not be reinserted by later amendment. TMEP §1402.07.

When an amendment to allege use is filed electronically, the TEAS form requires the applicant to expressly indicate an intention to delete a class, or to delete goods/services within a class. Therefore, if any of the goods/services identified in the application do not appear in the identification of goods/services in the amendment to allege use, the examining attorney should not issue any inquiry with respect to these goods/services. The applicant may not thereafter reinsert these goods/services.

If an amendment of the identification of goods/services results in the addition of class(es) to the application after an amendment to allege use is filed, the examining attorney must require payment of the fee(s) for filing the amendment to allege use in the added class(es), in addition to the fee required by 37 C.F.R. §2.6(a)(1) for adding a class(es) to the application. TMEP §1403.02(c).

1104.09(d) Use in Commerce and Dates of Use

An amendment to allege use must include a verified statement that the mark is in use in commerce, and must specify the date of the applicant’s first use of the mark and first use of the mark in commerce for each class of goods/services. 37 C.F.R. §2.76(b)(1)(ii). The applicant may amend the dates of use if the applicant supports the amendment with an affidavit or declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c). The applicant may not amend the dates of use to recite dates of use that are subsequent to the filing of the amendment to allege use. However, the applicant may withdraw the amendment to allege use. 37 C.F.R. §2.76(h).

1104.09(e) Specimen

An amendment to allege use must include a specimen for each class of goods or services. The examining attorney must review the specimen for compliance with all relevant requirements. See TMEP §904.04 regarding material that is appropriate as a trademark specimen, TMEP §§1301.04 et seq. regarding material that is appropriate as a service mark specimen, and TMEP §§1202 et seq. and 1301.02 et seq. regarding use as a mark.

If the applicant submits a substitute specimen in conjunction with an amendment to allege use, the applicant must verify that the applicant used the substitute specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. Similarly, if the applicant submits an additional specimen in support of a multiple-class application that is not identical to the specimen originally filed, the applicant must verify that the applicant used the new specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. TMEP §904.05.

If in fact the mark was first used on dates other than those asserted in the amendment to allege use, the dates of use must be corrected. See TMEP §§903.05 and 1104.09(d) regarding amendment of the dates of use.

If the amendment to allege use is filed through TEAS, the specimen must be a digitized image in .jpg or .pdf format. 37 C.F.R. §2.56(d)(4). See TMEP §904.02(a) for additional information about electronically filed specimens.

1104.09(f) Drawing

Under 37 C.F.R. §2.51(b), the drawing in an intent-to-use application must be a substantially exact representation of the mark as intended to be used and as actually used as shown on the specimen filed with the amendment to allege use. An applicant may not amend the mark in the original drawing if the amendment constitutes a material alteration of the mark. 37 C.F.R. §2.72(b)(2); TMEP §§807.14 et seq. The same standards that apply to use applications in determining whether specimens support use of the mark and whether amendments to the drawing can be permitted also apply in the examination of an amendment to allege use.

Therefore, if the mark in the drawing filed with the original application is not a substantially exact representation of the mark as used on the specimen filed with the amendment to allege use, the examining attorney must require: (1) either submission of a new specimen or an amendment of the mark in the drawing, if the amendment of the mark would not be a material alteration of the mark on the original drawing; or (2) submission of a new specimen, if the amendment of the mark would be a material alteration of the mark on the original drawing. 37 C.F.R. §2.72(b)(2). See TMEP §§807.14 et seq. regarding material alteration.

1104.09(g) Fees

While the payment of the fee for at least one class is enough to meet the minimum filing requirements for an amendment to allege use (37 C.F.R. §2.76(e)), the examining attorney must require payment of fees to cover all classes identified in the application before approving the amendment to allege use. The applicant may amend the identification to delete classes.

If class(es) are added to the application after the filing of the amendment to allege use, the examining attorney must require payment of the fee(s) for filing the amendment to allege use in the added class(es), in addition to the fee required by 37 C.F.R. §2.6(a)(1) for adding a class(es) to the application. TMEP §1403.02(c).

If the applicant submits a filing fee that is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, a check is returned unpaid, or an EFT or credit card payment is refused or charged back by a financial institution), the examining attorney must require repayment of the fee before approving the mark for publication. In addition, when an EFT or credit card is refused, or a check is returned unpaid, the examining attorney must require a $50 processing fee under 37 C.F.R. §2.6(b)(12). This processing fee must be paid even if the applicant withdraws the amendment to allege use. See TMEP §405.06 regarding payments that are refused.

1104.09(h) Issuance of Actions by Examining Attorney Related to the Amendment to Allege Use

If the LIE reviews an amendment to allege use and refers it to the examining attorney for examination on the merits, the examining attorney should examine the amendment to allege use.

If the examining attorney determines that the amendment to allege use is not acceptable, or that it raises new issues in the case, the examining attorney will issue an action stating all refusals and requirements arising in the examination of the amendment to allege use and incorporating all unresolved issues from any outstanding Office action in the case. The examining attorney’s action related to the amendment to allege use supersedes any outstanding Office action, and the applicant’s response on all issues is due six months from the date of the new action. The new action must be nonfinal, because those issues arising from the examination of the amendment to allege use will have been raised for the first time.

If the amendment to allege use was referred for examination before the case was assigned to the examining attorney, the examining attorney will examine the application as a whole, including the amendment to allege use, and will issue a first action addressing all issues in the case.

If the application is suspended, the examining attorney should examine the amendment to allege use. If any action is required, the examining attorney should remove the application from suspension and take appropriate action. Any refusals or requirements that were operative at the time of suspension should be incorporated in the examining attorney’s action.

If the amendment to allege use is referred for examination on the merits at the same time as a response, or if it is referred for examination when the application is in the examining attorney’s amended docket after receipt of a response, the examining attorney should consider both the response and the amendment to allege use. If the amendment to allege use is acceptable in all respects, the examining attorney should approve the amendment to allege use and take whatever action is necessary on the response. See TMEP §1104.11 regarding approval of the amendment to allege use.

See TMEP §1104.07 regarding amendments to allege use filed with a notice of appeal or after the commencement of an appeal.

1104.10 Amendment and Withdrawal of Amendment to Allege Use

The applicant may amend the amendment to allege use to correct deficiencies, to overcome a refusal, to comply with a requirement, or for any other purpose.

The applicant may withdraw the amendment to allege use at any time before approval of the mark for publication. 37 C.F.R. §2.76(h). The Office will not refund the fee for filing an amendment to allege use that is withdrawn (except as provided in TMEP §1104.04), and the document and specimen(s) filed with the amendment to allege use will remain part of the record.

The applicant may authorize the examining attorney to issue an examiner’s amendment that withdraws the amendment to allege use.

If the applicant withdraws the amendment to allege use, the application will be processed as an intent-to-use application subject to publication and issuance of a notice of allowance. After issuance of the notice of allowance, the applicant must file a statement of use.

If the applicant wishes to request withdrawal of an amendment to allege use during an ex parte appeal, the applicant should direct the request to the Trademark Trial and Appeal Board.

If the applicant withdraws the amendment to allege use, the examining attorney will withdraw any requirements or refusals specifically related to use of the mark, such as objections related to the form of the verified statement itself, the agreement of the mark as used on the specimens with the mark shown on the drawing, or the use of the applied-for designation as a trademark or service mark evidenced by the specimen. The examining attorney should also withdraw any requirement or refusal related to the execution of the amendment to allege use.

The examining attorney should maintain any requirement or refusal arising from the amendment to allege use not specifically related to the dates of use or use of the mark, such as refusals or requirements related to ownership or refusals under 15 U.S.C. §1052(e)(1), §1052(e)(2), §1052(e)(3) or §1052(e)(4). The specimens or any other submission related to the amendment to allege use will remain part of the record and may be relied on to support refusals and requirements under these sections.

If the applicant withdraws the amendment to allege use after it has been approved, the examining attorney must withdraw the approval on the Office’s automated Trademark Reporting and Monitoring (“TRAM”) System.

1104.11 Approval of Amendment to Allege Use After Examination

The examining attorney must approve the amendment to allege use if it complies with the requirements specified in 37 C.F.R. §§2.76(b) and (c). The amendment to allege use must be approved even if requirements or refusals unrelated to §2.76(b) or (c) are necessary as a result of the examination of the amendment to allege use. Approval of the amendment to allege use does not signify that the application is in condition for approval for publication.

The examining attorney should not approve the amendment to allege use if it does not meet all the requirements of 37 C.F.R. §§2.76(b) and (c), e.g., if the applicant has not provided both a specimen and a fee for each class, or if the goods/services in the amendment to allege use do not conform to the goods/services specified in the application.

On the other hand, if the amendment to allege use meets the requirements of 37 C.F.R. §§2.76(b) and (c), but requirements or refusals related to the ownership of the mark, use of the mark, inconsistencies between the mark in the drawing and the mark on the specimens, or other matters require action, the examining attorney should approve the amendment to allege use and then take action on those other issues. For example, if the specimen shows ornamental use of the proposed mark, the examining attorney should approve the amendment to allege use and issue a refusal based on ornamental use of the proposed mark.

When approving an amendment to allege use, the examining attorney must perform the appropriate TRAM transaction to ensure that a computer-generated notice is issued advising the applicant that the amendment to allege use has been approved and that, if and when the application publishes, it will be published in the same manner as a use-based application. In other words, publication in the Official Gazette will include dates of use and, if the applicant survives the opposition period, the Office will issue a certificate of registration rather than a notice of allowance.

1105 Publication of Intent-to-Use Applications for Opposition

If an amendment to allege use has been submitted and accepted, the intent-to-use application is processed as a use application. If the examining attorney determines that the mark is entitled to registration, the examining attorney will approve the mark for publication and the mark will be published for opposition. If the application is not successfully opposed, the mark will register.

If no amendment to allege use has been accepted for an intent-to-use application, and the examining attorney determines that the mark is entitled to registration but for the submission of an allegation of use, the examining attorney will approve the mark for publication and the mark will be published for opposition. If the application is not successfully opposed, the Office will issue a notice of allowance. 15 U.S.C. §1063(b)(2); 37 C.F.R. §2.81(b).

1106 Notice of Allowance

1106.01 Issuance of the Notice of Allowance

Section 13(b)(2) of the Trademark Act, 15 U.S.C. §1063(b)(2), provides for issuance of a notice of allowance if a §1(b) application is published for opposition and is not successfully opposed. The notice of allowance in an intent-to-use application will issue on the same date that a registration would issue in a use application (normally 12 weeks after the date of publication). The Office does not publish any notification that a notice of allowance has been issued in the Official Gazette.

The notice of allowance will list the serial number of the application, the name of the applicant, the correspondence address, the mark, the identification of goods/services, and the date of issuance of the notice of allowance. 37 C.F.R. §2.81(b). The notice of allowance is a key document because its issue date establishes the due date for filing a statement of use. The accuracy of the information stated on the notice of allowance is important. If there are any errors in the notice of allowance, the applicant should notify the ITU/Divisional Unit immediately. See TMEP §1106.04.

If an applicant asserts other bases for registration in addition to §1(b), the Office will publish the mark for opposition and will issue a notice of allowance if there is no successful opposition. The goods/services for all the bases will remain in the application pending the filing and approval of a statement of use for the goods/services based on §1(b), unless the applicant files a request to divide. See TMEP §§1110 et seq. regarding requests to divide. If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use. TMEP §806.02(d). The applicant may file a petition to revive if the delay in filing the statement of use or extension request was unintentional. See TMEP §§1714 et seq.

1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance

If, after issuance of the notice of allowance but before submission of the statement of use, the Office determines that a clear error was made in approving the mark for publication, the Office will cancel the notice of allowance and return the application to examination. The examining attorney will issue an appropriate Office action that includes the relevant requirement or refusal and informs the applicant of the cancellation of the notice of allowance. See TMEP §1106.03 regarding cancellation of the notice of allowance.

After the notice of allowance issues, the examining attorney has jurisdiction to act in the case. 37 C.F.R. §2.84(a). Therefore, the examining attorney does not have to request jurisdiction to take an action, as would be required to take an action after publication but before the notice of allowance issues. However, after a notice of allowance issues, the examining attorney should not make a refusal or requirement that could or should have been made during initial examination of the application, unless the initial failure to make the refusal or requirement was a clear error. See TMEP §1109.08 regarding the “clear error” standard. If, after the notice of allowance issues, the examining attorney determines that he or she must make a refusal or requirement that could or should have been made during initial examination of the application, the examining attorney should consult the managing attorney or senior attorney before taking any such action. This must be done whether the action is to be taken before, during or after examination of the statement of use, and regardless of whether the notice of allowance is cancelled. This applies to any refusal that arguably could or should have been made during initial examination, such as most refusals under §2(d) or §2(e)(1) of the Act.

1106.03 Cancellation of Notice of Allowance

If the Office cancels the notice of allowance before the filing or examination of the statement of use, the Office will refund any fees paid in conjunction with a statement of use or request(s) for extension(s) of time to file a statement of use.

Cancellation of the notice of allowance is handled by the ITU/Divisional Unit of the Office.

When the notice of allowance is cancelled, the application is returned to initial examination. The examining attorney does not have to request jurisdiction to issue an Office action. If the applicant overcomes the refusal or complies with the requirement, the examining attorney may approve the mark for publication again. The mark must be republished.

If the application is returned to initial examination, any statement of use that had previously been submitted will remain in the record but will not be examined unless it is resubmitted with the required fee as an amendment to allege use or statement of use at the appropriate time.

If the applicant files a statement of use or request for extension of time to file a statement of use after the notice of allowance has been cancelled, the ITU/Divisional Unit will inform the applicant in writing that the statement of use or extension request is untimely, and refund the filing fee.

1106.04 Correction of Errors in Notice of Allowance

When the applicant receives a notice of allowance, the applicant should check the accuracy of the information. If there are any errors in the notice of allowance, the applicant should notify the ITU/Divisional Unit of the Office immediately, preferably by fax or telephone.

Correction of Office Error

If an error in the notice of allowance was the result of an Office error (e.g., entering data incorrectly or failing to enter a timely filed amendment), the Office will determine whether the change requires republication. If necessary, the ITU Unit will refer the application to the examining attorney to approve the change and determine whether republication is required.

If the change can be made without republication, the ITU Unit will make the correction. The Office will not issue a new notice of allowance or extend the time for filing a statement of use.

If republication is required, and no action by the examining attorney that requires a response is necessary, the ITU Unit will make the correction, cancel the notice of allowance, and refund any fees paid for filing a statement of use or request(s) for extension of time to file a statement of use. The application will then be scheduled for republication. If the application is not opposed or survives all oppositions filed, the Office will issue a new notice of allowance.

If the examining attorney must issue an Office action that requires a response as a result of the requested correction, the ITU Unit will cancel the notice of allowance, refund any fees paid for filing a statement of use or request(s) for extension of time to file a statement of use, and send the file to the examining attorney for further action.

Correction of Applicant’s Error

If an error in the notice of allowance is the result of an applicant’s error (e.g., providing incorrect information in the application or in an amendment to the application), the applicant must file a written amendment, which will be processed like any other amendment filed after issuance of the notice of allowance and before filing of the statement of use. See TMEP §1107.

1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use

Generally, the only amendments that can be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods/services from the identification of goods and services (37 C.F.R. §2.77); (2) the deletion of a basis in a multiple-basis application (37 C.F.R. §2.35(b)(1)); and (3) changes of attorney and changes of address.

“Deletion,” within the meaning of 37 C.F.R. §2.77, means the elimination of an existing item in an identification of goods and services in its entirety. Deletion is distinct from other types of amendments to limit an identification, such as amendments to limit the goods as to types, channels of trade or class of purchasers, or to restrict an existing item in scope by the introduction of some qualifying language, or the substitution of specific for more general terms.

The Office will normally not consider any other amendment to the application during this period. If the applicant submits any other amendment during this period, the Office will place the amendment in the record for consideration at the time of examination of the statement of use. 37 C.F.R. §2.77. The ITU paralegal or LIE will advise the applicant that the amendment has been received but that it will not be considered until the examining attorney examines the statement of use.

The applicant may file a petition under 37 C.F.R. §§2.146(a)(3) and (a)(5) to waive 37 C.F.R. §2.77 to permit an examining attorney to examine an amendment (other than an amendment deleting a basis or deleting specified goods/services) during the period between the issuance of the notice of allowance and the filing of the statement of use. TMEP §1107.01. In re Upsher-Smith Laboratories, Inc., 45 USPQ2d 1371 (Comm’r Pats. 1997). The petition must be accompanied by the fee required by 37 C.F.R. §2.6. See TMEP Chapter 1700 regarding petitions.

The filing of an amendment after issuance of the notice of allowance does not extend the deadline for filing the statement of use. Unless the amendment requires republication, the applicant must file a statement of use or request for an extension of time to file a statement of use.

See TMEP §1106.04 regarding correction of errors in a notice of allowance, TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendments to add or substitute a basis between issuance of the notice of allowance and filing the statement of use.

1107.01 Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is Filed

As noted in TMEP §1107, an applicant may file a petition under 37 C.F.R. §§2.146(a)(3) and (a)(5) to waive 37 C.F.R. §2.77 to permit an examining attorney to examine an amendment during the period between the issuance of a notice of allowance and the filing of a statement of use. In re Upsher-Smith Laboratories, Inc., 45 USPQ2d 1371 (Comm’r Pats. 1997). If such a petition is granted, the examining attorney will either accept or reject the proposed amendment(s) in accordance with the following procedures:

Amendment Accepted/Republication Not Required: If an examining attorney determines that an amendment is acceptable and republication is not required, the examining attorney will call or e-mail the applicant to notify the applicant of acceptance, and make a note to the file that the proposed amendment has been accepted and that the applicant has been notified of the acceptance. The examining attorney will instruct the LIE to enter the amendment. The application will await the filing of a statement of use or extension request.

Amendment Unacceptable: If an examining attorney determines that an amendment is unacceptable, the examining attorney will call or e-mail the applicant to notify the applicant that the amendment is not accepted, and make a note to the file that the proposed amendment is unacceptable and that the applicant has been notified of this. The application will await filing of a statement of use or extension request. The applicant must accept the denial, but may again request to amend the application when filing the statement of use.

Amendment Accepted; Republication Required: If an examining attorney determines that the amendment is acceptable, but that republication is required, the examining attorney will call or e-mail the applicant to ask if the applicant wishes to maintain the request for amendment in light of the fact that republication is required. If the applicant elects to maintain the request, the examining attorney will make a note to the file that the proposed amendment has been accepted, that republication is required, and that the applicant has been advised of this. The examining attorney will have the amendment entered, and will request that the ITU/Divisional Unit cancel the notice of allowance by sending an e-mail message to the internal TM ITU Cancel mailbox. The ITU/Divisional Unit will cancel the notice of allowance and the application will be scheduled for republication.

Examiner’s Amendment Required; Republication Not Required: If an examining attorney determines that an examiner’s amendment is necessary, and republication is not required, the examining attorney will prepare, but not mail, the examiner’s amendment. The examiner’s amendment must contain a statement that republication is not required. The examining attorney must e-mail the internal TMPHOTOCOMP mailbox, with the unmailed examiner’s amendment attached, along with instructions for entering the requested amendment(s). The body of the e-mail message must include a statement that republication is not required. The Office of Trademark Program Control will enter and mail the examiner’s amendment.

Examiner’s Amendment Required; Republication Required: If an examining attorney determines that an examiner’s amendment is necessary, and republication is required, the examining attorney will call or e-mail the applicant to ask if the applicant wishes to maintain the request for amendment in light of the fact that republication is required. If the applicant elects to maintain the request, the examining attorney will prepare, but not mail, the examiner’s amendment. The examiner’s amendment must contain a statement that republication is required. The examining attorney must e-mail the internal TMPHOTOCOMP mailbox, with the unmailed examiner’s amendment attached, along with instructions for entering the requested amendment(s). The body of the e-mail message must contain a statement that republication of the mark will be required, and a request for cancellation of the notice of allowance. The Office of Trademark Program Control will ask the Intent to Use Unit to cancel the notice of allowance, and will enter and mail the examiner’s amendment, and republish the mark.

The granting of a petition to examine an amendment between issuance of the notice of allowance and filing of the statement of use does not extend the deadline for filing a statement of use (unless the notice of allowance is cancelled). Where an applicant has not yet received a response to a proposed amendment, the applicant must file its extension request or statement of use. The extension request or statement of use may use alternative language, e.g., refer both to the goods/services identified in the notice of allowance, and to a proposed amended identification.

1108 Requests for Extensions of Time to File the Statement of Use

Section 1(d) of the Trademark Act, 15 U.S.C. §1051(d), requires that a statement of use be filed within six months after the issuance of the notice of allowance, or before the expiration of a previously granted extension of time to file a statement of use. If the mark is not in use in commerce before the expiration of the six-month period following the issuance of the notice of allowance, the applicant must file a request for extension of time to file a statement of use within the six-month period to avoid abandonment of the application.

The first six-month extension can be requested without a showing of good cause. Up to four additional six-month extensions can be requested, with a showing of good cause. 15 U.S.C. §1051(d)(2). Thus, the time available for filing the statement of use may not be extended beyond thirty-six months from the mailing date of the notice of allowance.

To expedite processing, it is recommended that the applicant file the extension request through TEAS, at http://www.uspto.gov/teas/index.html. Alternatively, an applicant can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form. The applicant may mail, fax or hand-deliver the completed form to the Office. If the form is faxed, it must be accompanied by an authorization to charge the filing fee to a credit card or deposit account. The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf. If the extension request is filed though TEAS, payment must be made by credit card, deposit account or EFT.

Extension requests are handled by the ITU/Divisional Unit of the Office.

1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use

Under 15 U.S.C. §1051(d), the applicant must file the extension request within six months of the mailing date of the notice of allowance, or before the expiration of a previously granted extension; otherwise the application is abandoned. 15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.65(c) and 2.88(h).

Extensions of time are granted in six-month increments. 37 C.F.R. §2.89(c). The first extension will begin to run from the expiration of the six-month period following issuance of the notice of allowance. An applicant will receive the full benefit of each extension before a subsequent extension will begin to run. The six-month period following issuance of the notice of allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension. No extension will be granted for more than six months. 37 C.F.R. §2.89(b).

The applicant cannot file two extension requests within the same six-month period following the issuance of the notice of allowance. For example, if the notice of allowance was issued May 6, 2007, and the applicant files the first extension request on July 2, 2007, the applicant may file the second extension request no earlier than November 7, 2007 (the beginning of the second six-month period after issuance of the notice of allowance) and no later than May 6, 2008 (the expiration of the first extension of time to file a statement of use).

The Office will notify the applicant of the grant or denial of a request for an extension of time, and of the reasons for a denial. However, failure to notify the applicant of the grant or denial of an extension request before the expiration of the requested extension does not relieve the applicant of the responsibility of timely filing a statement of use or further extension request. 37 C.F.R. §2.89(g).

Under 37 C.F.R. §2.195(a)(2), an extension request filed through TEAS is considered to have been filed on the date the Office receives the transmission (Eastern Time), regardless of whether that date is a Saturday, Sunday, or federal holiday within the District of Columbia. When an extension request is filed electronically, TEAS almost immediately displays a “Success” page that confirms receipt. This page is evidence of filing should any question arise as to the filing date of the extension request, and it may be printed or copy-and-pasted into an electronic record for storage. TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

A request for an extension of time to file a statement of use filed on paper is considered timely if it is mailed or transmitted by the due date with a certificate of mailing or facsimile transmission under 37 C.F.R. §2.197. See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

1108.02 Requirements for Request for an Extension of Time to File a Statement of Use

First Extension Request

The first request for an extension of time to file a statement of use must include: (1) a written request, before expiration of the six-month period following issuance of the notice of allowance; (2) the prescribed fee for each class of goods or services; and (3) a verified statement signed by the applicant that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce. 37 C.F.R. §2.89(a).

Second and Subsequent Extension Requests

A second or subsequent extension request must be submitted before expiration of a previously granted extension of time and must include: (1) a written request; (2) the prescribed fee for each class of goods or services; (3) a verified statement signed by the applicant that the applicant has a continued bona fide intention to use the mark in commerce, specifying those goods/services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce; and (4) a showing of good cause, as required by 37 C.F.R. §2.89(d). 37 C.F.R. §2.89(b). Extensions of time under 37 C.F.R. §2.89(b) (i.e., second and subsequent extension requests) are granted in six-month increments and may not aggregate more than 24 months. 37 C.F.R. §2.89(c).

1108.02(a) Ownership

The party filing the request for an extension of time to file a statement of use must be the owner of the mark at the time of filing. 15 U.S.C. §1051(d)(2); 37 C.F.R. §§2.89(a)(3) and 2.89(b)(3). If the party filing the extension request is not the owner of record, the request should include a statement that the assignment or other document of title is recorded (or filed for recordation) in the Assignment Services Branch of the Office, or other evidence that the party filing the extension request is the owner of the application in accordance with 37 C.F.R. §§3.71 and 3.73. (Note: An application under §1(b) cannot be assigned before the applicant files an allegation of use, except to a successor to the applicant’s business, or portion of the business to which the mark pertains. See TMEP §501.01(a).)

If the extension request does not include the necessary evidence, the ITU paralegal will issue an Office action denying the request. If the party who filed the extension request was the owner of the mark at the time of filing, the applicant may submit evidence to establish the chain of title after expiration of the statutory filing period. The response must be filed within the time provided in the Office action advising the applicant of the denial.

To establish ownership, the new owner must either: (1) record an assignment or other document of title with the Assignment Services Branch, and state that the document has been recorded in the response to the Office action; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, supported an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1); TMEP §502.01. The Office recommends that requests to record documents with the Assignment Services Branch be filed through Electronic Trademark Assignment System (“ETAS”) at http://etas.uspto.gov.

If the party who filed the extension request was not the owner at the time of filing, the true owner may not file a substitute extension request unless there is time remaining in the statutory filing period. Cf. In re Colombo Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).

If the applicant notifies the ITU/Divisional Unit during the processing of an extension request that a document has been recorded, the ITU paralegal will change the owner of record in TRAM. See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of a new owner, and TMEP §§504 et seq. regarding the circumstances in which the ownership field in the trademark databases will be automatically updated after recordation of a document with the Assignment Services Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.

1108.02(b) Verification

The extension request must be verified by someone properly authorized to sign on behalf of applicant. If the extension request is unsigned (or signed by the wrong party), a substitute verification must be submitted before the expiration of the deadline for filing the statement of use. 37 C.F.R. §§2.89(a)(3) and 2.89(b)(3). See 37 C.F.R. §2.33(a) and TMEP §804.04 regarding the definition of a person properly authorized to sign on behalf of applicant. Generally, the Office will not question the authority of the person who signs a verification, unless there is an inconsistency in the record as to the signatory’s authority to sign.

If the extension request is not filed within one year after it is signed, the Office will require a substitute verification or declaration under 37 C.F.R. §2.20 that the applicant still has a bona fide intention to use the mark in commerce. 37 C.F.R. §2.89(h). See TMEP §804.03.

See TMEP §804.05 regarding signature.

1108.02(c) Filing Fee

A filing fee sufficient to cover at least one class must be submitted wi