1102 Initial Examination of Intent-to-Use Applications
In an intent-to-use application, the examining attorney will potentially examine the application twice: first, when the trademark or service mark application is initially filed based on a bona fide intention to use the mark in commerce under 15 U.S.C. §1051(b) (or is initially filed based on the applicant’s bona fide intention, and entitlement, to exercise legitimate control over the use of the mark in commerce, for a collective or certification mark application), and second, when the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d) ). See TMEP §§1104–1104.11 regarding amendments to allege use and §§1109–1109.18 regarding statements of use. After receipt of the application, the examining attorney will initially examine the application to determine whether the mark is eligible for registration but for the lack of evidence of use. If the mark is determined to be eligible, the mark will be approved for publication and then published for opposition. If the applicant has not submitted an amendment to allege use before approval for publication, and the application is not successfully opposed, the USPTO will issue a notice of allowance. 15 U.S.C. §1063(b)(2); 37 C.F.R. §2.81(b). See TMEP §§1106–1106.04 regarding a notice of allowance. In such a case, the applicant must submit a statement of use. 15 U.S.C. §1051(d)(1); 37 C.F.R. §2.88.
An intent-to-use application is subject to the same requirements and examination procedures as other applications, except as specifically noted. The examining attorney must raise all possible refusals and requirements in initial examination.
1102.01 Substantive Refusals
To the fullest extent possible, the examining attorney will examine an intent-to-use application for registrability under Trademark Act §1 and §2(a) through (e), 15 U.S.C. §§1051, 1052(a) –(e), according to the same procedures and standards that apply to any other application. That is, the examining attorney must make all appropriate refusals and/or requirements with respect to issues such as ownership, deceptiveness, likelihood of confusion, mere descriptiveness, geographic significance, and surname significance. In re Bacardi & Co., 48 USPQ2d 1031, 1035 (TTAB 1997) ; In re Am. Psychological Ass’n, 39 USPQ2d 1467, 1469 (Comm’r Pats. 1996).
The examining attorney should not issue a requirement or refusal under these sections during examination of the statement of use if the issue could or should have been raised during initial examination, unless the failure to issue the refusal or requirement would be a clear error. See TMEP §§706.01, 1109.08.
Where a significant length of time has elapsed since the initial examination, a mark may have become descriptive or even generic with respect to the goods/services. In such a case, since the evidence of the descriptive or generic use would not have been available during initial examination, the requirement or refusal must be issued during second examination.
The examining attorney should investigate all possible issues regarding registrability through all available sources. If appropriate, the examining attorney may require that the applicant provide literature or an explanation concerning the intended manner of use of the mark, or the meaning of the mark in relation to the goods/services, under 37 C.F.R. §2.61(b). See TMEP §814; In re DTI P'ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003) ; In re Page, 51 USPQ2d 1660, 1665 (TTAB 1999).
The examining attorney should also search applicant’s website to see if it provides information about the goods/services. See In re Promo Ink, 78 USPQ2d 1301, 1303 (TTAB 2006) (rejecting applicant’s argument that it was improper for the examining attorney to rely on evidence obtained from applicant’s website when the application was based on intent to use and no specimens were yet required, and stating that "[t]he fact that applicant has filed an intent-to-use application does not limit the examining attorney’s evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession."); TMEP §710.01(b).
While the examining attorney must examine and act on all possible issues in the initial examination of the application, requirements or refusals specifically tied to use of the mark (e.g., ornamentation) should generally be addressed after the applicant submits an allegation of use and a specimen showing use of the mark in commerce. See TMEP §§1202–1202.17(e)(vi) regarding use as a mark. However, an examining attorney may review a §1(b) application for which no allegation of use and specimen have been submitted, and believe it likely that a refusal of registration on the ground that the subject matter does not function as a mark may be made after an allegation of use is submitted. In that instance, this potential refusal should be brought to the applicant’s attention in the first action issued by the USPTO. This is done strictly as a courtesy. If information regarding this possible ground for refusal is not provided to the applicant before the allegation of use is filed, the USPTO is not precluded from later refusing registration on this basis.
1102.02 Drawings
The examination of the drawing during initial examination, before submission of an allegation of use and specimen, will focus primarily on the form of the drawing and compliance with 37 C.F.R. §§2.52, 2.53, and 2.54. Intent-to-use applicants must comply with all formal requirements related to drawings, whether in standard characters or in special form. See TMEP §§807–807.18. See TMEP §1104.10(b)(vi) regarding examination of the drawing after submission of an amendment to allege use, and §1109.12 regarding examination of the drawing after submission of a statement of use. The applicant may not amend the mark in a drawing if the amendment constitutes a material alteration of the mark. 37 C.F.R. §2.72(b)(2).
1102.03 Intent-to-Use Applications and the Supplemental Register
A mark in an intent-to-use application under 15 U.S.C. §1051(b) is not eligible for registration on the Supplemental Register until the applicant has submitted an acceptable allegation of use (i.e., either an amendment to allege use that meets the requirements of 37 C.F.R. §§2.76(b) and (c), or a statement of use that meets the requirements of 37 C.F.R. §§2.88(b) and (c) ). 37 C.F.R. §§2.47(d), 2.75(b).
If an intent-to-use applicant requests registration on the Supplemental Register before filing an acceptable allegation of use, the examining attorney will refuse registration under §23 of the Trademark Act, 15 U.S.C. §1091, on the ground that the mark is not in lawful use in commerce. See 37 C.F.R. §2.75(b); TMEP §714.05(a)(i). If an application is based on intent-to-use in addition to another basis, registration of the entire application will be refused on the Supplemental Register unless the applicant either deletes the §1(b) basis or files a request to divide. See TMEP §§1110–1110.12 regarding requests to divide. The examining attorney will withdraw the refusal if the applicant submits an acceptable allegation of use.
If an application is based solely on §1(b), and the applicant files an acceptable amendment to allege use or statement of use and an acceptable amendment to the Supplemental Register, the USPTO will consider the filing date of the amendment to allege use or statement of use to be the effective filing date of the application. 37 C.F.R. §2.75(b); TMEP §206.01. The filing date of an amendment to allege use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.76(c), and the filing date of a statement of use is the date on which the applicant meets the minimum filing requirements of 37 C.F.R. §2.88(c). Due to the change in the effective filing date, the examining attorney must conduct a new search of USPTO records for conflicting marks. In this situation, the USPTO does not alter the original filing date in its automated records. TMEP §206. If the new search shows that a later-filed conflicting application now has an earlier filing date (based on the change in the effective filing date of the subject application), the examining attorney must suspend action on the subject application pending disposition of the other application, if the application is otherwise in condition for suspension. See TMEP §§1208–1208.03(c) regarding the procedures for handling conflicting marks in pending applications.
Amendment of an application from the Supplemental to the Principal Register does not change the effective filing date of an application. Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009) (stating the filing date did not change when applicant, who originally sought registration on the Supplemental Register without alleging use in commerce, amended to seek registration on the Principal Register under §1(b), because use in commerce is not required for receipt of a filing date on the Supplemental Register).
When the applicant files an amendment to allege use that complies with the minimum requirements of 37 C.F.R. §2.76(c) together with an amendment to the Supplemental Register, the examining attorney must follow the procedures outlined in TMEP §714.05(a)(i).
See TMEP §§815–816.05 for additional information about the Supplemental Register.
1102.04 Claims of Acquired Distinctiveness under §2(f)
See TMEP §§1212.09–1212.09(b) regarding claims of distinctiveness under §2(f), 15 U.S.C. §1052(f), in intent-to-use applications.