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 to the Director 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 the acceptance, and enter a Note to the File in the record indicating 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 enter a Note to the File in the record indicating 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 refusal to enter the amendment, 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 enter a Note to the File in the record indicating 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 staff cancel the notice of allowance by sending an e-mail message to the internal TM ITU Cancel mailbox.  The ITU staff 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.  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.  The body of the e-mail message must contain a statement that republication of the mark will be required, and request cancellation of the notice of allowance.  The Office of Trademark Program Control will ask the ITU staff to cancel the notice of allowance, 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 or request for an extension of time to file a statement of use (unless the notice of allowance is cancelled).  Regardless of whether an applicant has received a response to a proposed amendment, the applicant must file its extension request or statement of use when it becomes due.  The extension request or statement of use may refer to the proposed amended identification.

See TMEP §1505.03 et seq. for examples of situations where republication is and is not required.