1206    Amendment to Allege Use; Statement of Use

1206.01    Amendment to Allege Use

An amendment to allege use under Trademark Act § 1(c), 15 U.S.C. § 1051(c), may be filed in an intent-to-use application, i.e., an application under Trademark Act § 1(b), 15 U.S.C. § 1051(b), at any time between the filing of the application and the date the examining attorney approves the mark for publication. Thereafter, an allegation of use may be submitted only as a statement of use under Trademark Act § 1(d), 15 U.S.C. § 1051(d), after the issuance of a notice of allowance under Trademark Act § 13(b)(2), 15 U.S.C. § 1063(b)(2). [ Note 1.] Thus, an amendment to allege use filed during the pendency of an ex parte appeal to the Board is timely. [ Note 2.] As a result, an applicant with an intent-to-use based application that wishes to attempt to overcome a refusal by amending its application to the Supplemental Register may, if use has commenced during the course of the appeal, file an amendment to allege use.

If an applicant that has filed an amendment to allege use during the six-month response period following issuance of a final action also files a timely appeal, and the examining attorney has not yet acted on the amendment to allege use when the appeal is filed, or if the applicant files an amendment to allege use along with the notice of appeal, the amendment to allege use will be handled by the Board in the same manner as any other amendment filed during the six-month response period following issuance of a final action. See TBMP § 1205.

If the notice of appeal is filed through the Board’s ESTTA electronic filing system, the applicant should check the box stating that a request for reconsideration has been filed. See TBMP § 1202.03. If the applicant has not previously filed the amendment to allege use, at the same time it files its notice of appeal it should file the amendment to allege use through the Office’s TEAS filing system. The filing of the notice of appeal through the ESTTA system, coupled with the checking of the request for reconsideration box, will electronically generate an order instituting the appeal, suspending action on it, and remanding the application to the examining attorney to consider the amendment to allege use. Filing the notice of appeal via ESTTA is strongly encouraged. See TBMP § 110.09 for more information regarding ESTTA.

If the applicant files its notice of appeal through a paper submission, it should indicate in the notice of appeal that it has pending, or is contemporaneously filing, an amendment to allege use. [ Note 3.] The Board will acknowledge receipt of the appeal and amendment to allege use, suspend further proceedings (including the applicant’s time for filing its appeal brief) with respect to the appeal, and remand the application to the examining attorney for consideration of the amendment to allege use. The applicant should not file its appeal brief within sixty days of the filing of the notice of appeal, as provided by 37 CFR § 2.142(b)(1), even if the Board has not issued its order suspending proceedings prior to the date the appeal brief would otherwise be due. Nor does the applicant need to verify with the Board that the due date for its brief will be changed if necessary. See TBMP § 1203.02(a).

If, in the course of examination of the amendment to allege use, the application is approved for publication (or for registration, in the case of an application amended to seek registration on the Supplemental Register), or becomes abandoned, the appeal will be moot. The examining attorney should so notify the applicant, by telephone or email. [ Note 4.] If the examining attorney, after consideration of the amendment to allege use, adheres to the final refusal to register, or ultimately issues a new final refusal to register, which may include a refusal based on information in the amendment to allege use, the six-month response clause should be omitted from the paper in which such action is taken; the application should be returned to the Board; proceedings with respect to the appeal will be resumed; and further appropriate action will be taken therein. [ Note 5.]

If an applicant that has filed a timely appeal to the Board files an amendment to allege use more than six months after issuance of the appealed action, the Board may, in its discretion, suspend proceedings with respect to the appeal and remand the application to the examining attorney for consideration of the amendment to allege use. Alternatively, the Board may continue proceedings with respect to the appeal, thus deferring examination of the amendment to allege use until after final determination of the appeal. If the final determination of the appeal is adverse to the applicant, the amendment to allege use will be moot.

NOTES:

 1.   See 37 CFR § 2.76(a). See also In re Sovran Financial Corp., 25 USPQ2d 1537, 1538 (Comm’r 1991).

 2.   See 37 CFR § 2.76(a); TMEP § 1104.03 and TMEP § 1104.07.

 3.   For information concerning examination by the examining attorney of an amendment to allege use filed in conjunction with a notice of appeal, see TMEP § 1104.07.

 4.   See TMEP § 1104.07.

 5.   See TMEP § 1104.07.

1206.02    Statement of Use

A statement of use under Trademark Act § 1(d), 15 U.S.C. § 1051(d), is premature if it is filed in an intent-to-use application, i.e., an application under Trademark Act § 1(b), 15 U.S.C. § 1051(b), prior to the issuance of a notice of allowance under Trademark Act § 13(b)(2), 15 U.S.C. § 1063(b)(2). [ Note 1.]

A notice of allowance is not issued in an intent-to-use application (for which no amendment to allege use under Trademark Act § 1(c), 15 U.S.C. § 1051(c), has been timely filed and accepted) unless and until the application is approved for publication, and then published in the Official Gazette for opposition; no timely opposition is filed or all oppositions filed are dismissed; and no interference is declared. [ Note 2.] See TBMP § 219.

Therefore, a statement of use filed during an ex parte appeal to the Board generally is premature. A premature statement of use will not be considered. [ Note 3.] Instead, the premature statement of use will be returned to the applicant and the fee will be refunded.

NOTES:

 1.   See 37 CFR § 2.88(a).

 2.   See Trademark Act § 13(b)(2), 15 U.S.C. § 1063; 37 CFR § 2.81(b); TMEP § 1109.04.

 3.   See 37 CFR § 2.88(a).