1104.03 Time for Filing Amendment to Allege Use
An applicant may file an amendment to allege use at any time between the application filing date and the date the examining attorney approves the mark for publication. 37 C.F.R. §2.76(a)(1).
An amendment to allege use may be filed after commencement of an ex parte appeal. See TMEP §1104.07.
An applicant may not file either an amendment to allege use or a statement of use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance. This period, during which no allegation of use may be filed, is known as the "blackout period." See TMEP §1104.03(b).
1104.03(a) Use on All Goods/Services Required Before Filing
An applicant may not file an amendment to allege use until the mark has been in use in commerce on or in connection with all goods/services for which the applicant seeks registration under §1(b), unless the applicant files a request to divide. 37 C.F.R. §2.76(a)(2)(i). If the applicant files an amendment to allege use before using the mark on or in connection with all the goods/services, but does not file a request to divide, the examining attorney will require the applicant to: (1) withdraw the amendment to allege use (see TMEP §1104.11); (2) delete from the application the goods/services not covered by the amendment to allege use (see TMEP §1104.10(b)(iii)); or (3) file a request to divide out the goods/services that are not yet in use (see TMEP §§1110–1110.12).
1104.03(b) The "Blackout Period"
Under 37 C.F.R. §2.76(a)(1), the USPTO will not review an amendment to allege use filed after the date that the application is approved for publication by the examining attorney. Under 37 C.F.R. §2.88(a)(1), the USPTO will not review a statement of use filed before the date of issuance of the notice of allowance. These two rules combine to create a time period when neither an amendment to allege use nor a statement of use may be filed. This period is known as the "blackout period." Any statement of use or amendment to allege use filed during this period will be deemed untimely and the fee refunded. In re Sovran Fin. Corp., 25 USPQ2d 1537 (Comm’r Pats. 1991). See TMEP §1104.03(c) regarding processing amendments to allege use filed during the blackout period.
Intent-to-use applicants under 15 U.S.C. §1051(b) are encouraged to check the TSDR database on the USPTO website at http://tsdr.uspto.gov/ to determine the status of the application before filing an amendment to allege use.
If a review of the prosecution history of the application shows that the application has been approved for publication and a notice of allowance has not issued or was cancelled, the blackout period is in effect and an amendment to allege use should not be filed. The applicant should instead wait until the notice of allowance issues and then file a statement of use.
1104.03(c) Processing Amendment to Allege Use Filed During the Blackout Period
If an applicant files an amendment to allege use during the blackout period, the USPTO will notify the applicant that the amendment to allege use is untimely and will not be reviewed, and refund the filing fee. See 37 C.F.R. §2.76(a)(1).
The examining attorney must not cancel an approval of or withdraw an application from publication to process an untimely amendment to allege use. Furthermore, the examining attorney must not suspend an application or take any other similar action to extend the time for filing an amendment to allege use.
The USPTO will not process an untimely amendment to allege use as a statement of use. However, the applicant may resubmit an untimely amendment to allege use as a statement of use after the notice of allowance issues.