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 within the same time frame that a registration would issue in a use application (normally twelve weeks after the date of publication). The USPTO does not publish any notification in the Official Gazette that a notice of allowance has been issued.

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, or if the applicant believes that the notice of allowance issued in error (e.g., because an amendment to allege use was previously approved by the USPTO or the filing basis of the application should not be designated as intent-to-use under §1(b)), the applicant should notify the ITU/Divisional Unit immediately, preferably by fax or telephone. See TMEP §1106.04. Telephone and fax numbers may be found on the USPTO website at http://www.uspto.gov.

If an applicant asserts other bases for registration in addition to §1(b), the USPTO 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, or a request to delete the §1(b). See TMEP §§1110 et seq. regarding requests to divide, and TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance. 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 USPTO determines that a clear error (see TMEP §706.01) was made in approving the mark for publication, the USPTO 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 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. If the examining attorney determines that he or she must make a refusal or requirement after issuance of the notice of allowance that could or should have been made during initial examination, the examining attorney must consult with his/her managing attorney or senior attorney before taking the 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.

There is no restriction in the Trademark Act or Trademark Rules of Practice as to the period of time prior to registration when the USPTO may issue a new requirement or new refusal. The USPTO has a duty to issue valid registrations and has broad authority to correct errors made by examining attorneys and other USPTO employees. See Last Best Beef LLC v. Dudas, 506 F.3d 333, 340, 84 USPQ2d 1699, 1704 (4th Cir. 2007) ("[F]ederal agencies, including the USPTO, have broad authority to correct their prior errors."); see also BlackLight Power Inc. v. Rogan, 295 F.3d 1269, 63 USPQ2d 1534 (Fed. Cir. 2002) (affirming that USPTO officials acted within their authority in a reasonable manner to withdraw a patent from issuance in order to fulfill the USPTO’s mission to issue valid patents, even after Notice of Allowance, payment of the issue fee and notification of the issue date, and with publication of the drawing and claim in the Official Gazette).

Thus, if the USPTO discovers that a mistake was made during initial examination that would result in issuance of a registration in violation of the Trademark Act or applicable rules, the USPTO must issue any necessary requirements or refusals, even if they could or should have been raised during initial examination.

See TMEP §1109.08 regarding the issuance of refusals and requirements during examination of a statement of use.

1106.03 Cancellation of Notice of Allowance

If the USPTO cancels the notice of allowance before the filing or examination of the statement of use, the USPTO 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, except where: (1) the applicant files a request to delete the §1(b) basis from a multiple-basis application (see TMEP §806.04(a)); or (2) the notice of allowance is cancelled as a result of an amendment to the filing basis after publication, pursuant to a petition to the Director (see TMEP §806.03(j)(ii)).

Cancellation of the notice of allowance is done by the ITU/Divisional Unit of the USPTO. To request that a notice of allowance be cancelled, a USPTO employee must send an e-mail request to the ITU/Divisional Unit’s internal mailbox with a clear statement of the reason why the notice of allowance is being cancelled. The ITU staff will enter an appropriate Note to the File in the record, stating who requested the cancellation and why. When the notice of allowance is cancelled, the examining attorney must inform the applicant that this has been done.

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 previously 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 an 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 USPTO immediately, preferably by fax or telephone. Telephone and fax numbers may be found on the USPTO website at www.uspto.gov/teas/contactUs.htm.

Correction of USPTO Error

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

If the change may be made without republication, the ITU staff will make the correction and issue a corrected notice of allowance. The USPTO 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 staff 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 successfully opposed, the USPTO 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 staff 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 forward the application 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.