219    Amendment to Allege Use; Statement of Use

An amendment to allege use under Trademark Act § 1(c), 15 U.S.C. § 1051(c), filed in an intent-to-use application (i.e., an application under Trademark Act 1(b), 15 U.S.C. § 1051(b) ) after approval for publication, is late-filed. [ Note 1.] Thus, an amendment to allege use filed during an extension of time to oppose or during an opposition is late-filed.

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 prior to the issuance of a notice of allowance under Trademark Act 13(b)(2), 15 U.S.C. § 1063(b)(2). [ Note 2.] A notice of allowance is issued in an intent-to-use application (for which no amendment to allege use has been timely filed and accepted) only after the opposition period (as extended) has expired and all oppositions filed have been dismissed. [ Note 3.] Thus, a statement of use filed during an extension of time to oppose or during an opposition is premature.

Any late-filed amendment to allege use or premature statement of use will not be considered, and any fee submitted therewith will be refunded. [ Note 4.]

If an intent-to-use application has been published and is under a well-taken request for an extension of time to oppose when a timely filed amendment to allege use (i.e., an amendment to allege use filed prior to approval for publication) is associated with the application, the Board will issue an action approving the extension of time (or, if already approved, noting that potential opposer has been granted an extension of time to oppose until a specified date) and advise the potential opposer that if it wishes to preserve its right to oppose should the amendment to allege use be ultimately withdrawn by the applicant or approved by the examining attorney, the potential opposer must continue to file further timely requests for extensions of time to oppose, or it must file the notice of opposition.

The examining attorney will process the amendment to allege use in the same manner as any other timely filed amendment to allege use that is not associated with the application file until after publication. [ Note 5.] In the event that the amendment to allege use is ultimately withdrawn by the applicant, or approved by the examining attorney, the examining attorney should notify the Board (before any scheduled republication of applicant’s mark) for further appropriate action with respect to the extension of time to oppose. [ Note 6.] If the application is abandoned while it is before the examining attorney, the Board should be notified.

The filing of the amendment to allege use will be considered good cause for extensions of time to oppose aggregating up to 120 days from the date of publication of the mark, but it will not constitute extraordinary circumstances justifying an extension of time beyond 120 days from publication. In such a situation, the Board will not suspend the time for filing an opposition or a subsequent extension of time pending consideration of the amendment to allege use. See TBMP § 209.01.

If an intent-to-use application has already been published, and is the subject of an opposition, when a timely filed amendment to allege use (i.e., an amendment to allege use filed prior to approval for publication) is associated with the application, the Board normally will suspend the opposition and return the application to the trademark examining attorney for appropriate action with respect to the amendment to allege use. [ Note 7.] In the event that the amendment to allege use is ultimately withdrawn by the applicant, or approved by the examining attorney, the examining attorney should so notify the Board and the Board will take further appropriate action with respect to the opposition. [ Note 8.] If the application is abandoned while it is before the examining attorney, the examining attorney should likewise notify the Board.

NOTES:

 1.   37 C.F.R. § 2.76(a); In re Sovran Financial Corp., 25 USPQ2d 1537, 1538 (Comm’r 1992) (amendment to allege use filed during blackout period denied as untimely).

 2.   Trademark Act § 1(d)(1), Trademark Act 13(b)(2), 15 U.S.C. § 1051(d)(1), 15 U.S.C. § 1063(b)(2); 37 C.F.R. § 2.81(b).

 3.   Trademark Act § 13(b)(2),15 U.S.C. § 1063(b)(2); 37 C.F.R. § 2.81(b).

 4.   37 C.F.R. § 2.76(a); 37 C.F.R. § 2.88(a). See TMEP § 1104.03(c) (Processing Amendment to Allege Use Filed During the Blackout Period).

 5.   See TMEP § 1104.04 (Processing Timely Amendment to Allege Use Located After Publication).

 6.   See TMEP § 1104.04.

 7.   See TMEP § 1104.04.

 8.   See TMEP § 1104.04.