1104.01 Minimum Filing Requirements for an Amendment to Allege Use
The amendment to allege use must include the following minimum elements before it will be referred to the examining attorney for examination on the merits:
- (1) the prescribed fee for at least one class;
- (2) one specimen of the mark as used in commerce; and
- (3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant that the mark is in use in commerce.
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(c) for a verified statement that the mark is in use in commerce. Cf. In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992) (holding that the petitioner’s verified date of first use in commerce and the statement that the mark was used in advertising combined to substantially comply with the "the mark is in use in commerce" requirement for purposes of filing a statement of use); In re Conservation Tech. Inc., 25 USPQ2d 1079, 1080 (Comm’r Pats. 1992) (finding, for purposes of the requirement that the statement of use state that "the mark is in use in commerce," the wording "in use in commerce at least since" satisfied the requirement based on the term "since," defined as "from a definite past time until now"). The examining attorney will require an allegation that the "mark is in use in commerce" during examination.
See TMEP §1104.08 regarding the requirements for 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(c). If so, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits.
With respect to the requirement that the amendment to allege use include a verification or declaration signed by the applicant, or a person properly authorized to sign on behalf of the applicant, 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. The examining attorney will determine whether the amendment to allege use was filed by the owner. See TMEP §1104.10(b)(i).
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 filing requirements of 37 C.F.R. §2.76(c) ( 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. 37 C.F.R. §2.76(d). 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 referred to the examining attorney and will not be examined on the merits. Id.
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, an electronic funds transfer ("EFT") or credit card payment is refused or charged back by a financial institution, or 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 (or stating that the specimen is in use in commerce in connection with the collective membership organization, for collective membership marks), before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.
If the amendment to allege use is not signed, the LIE will notify the applicant of the deficiency and advise that the applicant must submit a properly signed amendment to allege use before the mark is approved for publication, or the USPTO 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 within six months of the date of issuance 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(c), 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(a)(15) ), 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 USPTO.
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 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 filing requirements of 37 C.F.R. §2.76(c), the examining attorney will act on any other amendments in the application 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 other than use.
If the examining attorney determines that the LIE erred in holding that the amendment to allege use did not meet the minimum filing requirements of 37 C.F.R. §2.76(c), 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 enter an appropriate Note to the File in the record.