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." An applicant will not be permitted to electronically file an amendment to allege use or statement of use during the blackout period using TEAS.  Any permitted paper-filed amendment to allege use or statement of use (see TMEP §301.02) submitted 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 who filed under 15 U.S.C. §1051(b)   are encouraged to check the TSDR database on the USPTO website at https://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

An applicant will not be permitted to electronically file an amendment to allege use or statement of use during the blackout period using TEAS. If the applicant attempts to do so, the applicant will receive an error message indicating that the application is in the blackout period and advising that the applicant must wait until the status of the application changes to "Notice of Allowance issued" to file the form, and the applicant may monitor the status of the application at https://tsdr.uspto.gov.

Permitted paper filings. If an applicant submits a permitted paper-filed amendment to allege use (see TMEP §301.02) 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 any filing fee. See 37 C.F.R. §2.76(a)(1).