1109.16(a)   Statutory Requirements that Must Be Met Within Statutory Filing Period  

The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b)) before expiration of the period for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).  Thus, the following deficiencies must be cured before expiration of the statutory filing period:

  • (1) Specimens and Dates of Use in Commerce.  The applicant must make valid use of the mark in commerce and must provide one specimen that was in use before the expiration of the time permitted for filing the statement of use.  37 C.F.R. §2.59(b)(2).  If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline for filing the statement of use, the examining attorney must refuse registration because the applicant failed to make use within the time permitted.  See TMEP §1109.09(b).  

    The examining attorney must refuse registration on the same grounds if the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use.  37 C.F.R. §2.71(c)(2); TMEP §1109.09(a).

  • (2) Filing by Owner.  The party filing the statement of use must be the owner of the mark at the time of filing.  If the party who filed the statement of use was not the owner at the time of filing the statement of use, the applicant may not provide a substitute statement of use (or the equivalent) in the name of the true owner after the expiration of the deadline for filing the statement of use.  In re Colombo, Inc., 33 USPQ2d 1530 (Comm’r Pats. 1994).  Therefore, if the party filing the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the application will be abandoned for failure to file a statement of use.  See TMEP §1109.10 for further information.
  • (3) Verification.  The statement of use must be verified by the applicant or a person properly authorized to sign on behalf of applicant under 37 C.F.R. §2.193(e)(1).  If the statement of use is unsigned or signed by the wrong party, a substitute verification must be filed before the expiration of the statutory period for filing the statement of use.  37 C.F.R. §2.88(e)(3).  Generally, however, the USPTO does not question the authority of the person who verifies a statement of use.  See TMEP §1109.11(a).
  • (4) Filing Fee For At Least a Single Class.  Payment of the filing fee for at least a single class is a statutory requirement that must be satisfied before the expiration of the statutory period for filing the statement of use.  See TMEP §§1109.15 and 1109.15(a).

When refusing registration on the above grounds, the examining attorney should issue a regular Office action with a six-month response clause.  This gives the applicant six months to establish that it met the statutory requirements on or before the expiration of the time for filing the statement of use.  See TMEP §1109.16(b).