1107.01 Examination of Amendment Filed After the Notice of Allowance Issues but Before a Statement of Use Is Filed
As noted in TMEP §1107, an applicant may file a petition to the Director under 37 C.F.R. §§2.146(a)(3) and (a)(5) to waive 37 C.F.R. §2.77 to permit an examining attorney to examine an amendment (other than an amendment deleting a basis or deleting specified goods/services) during the period between the issuance of a notice of allowance and the filing of a statement of use. In re Upsher-Smith Labs., Inc., 45 USPQ2d 1371, 1373 (Comm’r Pats. 1997), partially superseded by rule change on other grounds. If such a petition is granted, the examining attorney will either accept or reject the proposed amendment(s) in accordance with the following procedures:
Amendment Acceptable; Republication Not Required: If an examining attorney determines that an amendment is acceptable and republication is not required, the examining attorney will call or e-mail the applicant to notify the applicant of the acceptance, and enter a Note to the File in the record indicating that the proposed amendment has been accepted and that the applicant has been notified of the acceptance. The examining attorney will instruct the LIE to enter the amendment. The application will await the filing of a statement of use or extension request.
Amendment Acceptable; Republication Required: If an examining attorney determines that the amendment is acceptable but republication is required, the examining attorney will notify the applicant by telephone or e-mail that the amendment cannot be accepted at this time because republication is required, and that the amendment may be resubmitted when the statement of use is filed. The examining attorney must also enter a Note to the File that the applicant has been so notified. The USPTO cannot republish the application after issuance of the notice of allowance and prior to submission of the statement of use and will not cancel the notice of allowance to allow republication unless there was USPTO error, since this could substantially delay prosecution of the application. The applicant may resubmit the amendment with the statement of use so that republication can occur.
Amendment Unacceptable: If an examining attorney determines that an amendment is unacceptable, the examining attorney will call or e-mail the applicant to notify the applicant that the amendment is not accepted, and enter a Note to the File in the record indicating that the proposed amendment is unacceptable and that the applicant has been so notified. The application will await filing of a statement of use or extension request. The applicant must accept the refusal to enter the amendment, but may again request to amend the application when filing the statement of use.
Examiner’s Amendment Required; Republication Not Required: If an examining attorney determines that an examiner’s amendment is necessary, and republication is not required, the examining attorney will prepare, but not send, the examiner’s amendment. The examiner’s amendment must contain a statement that republication is not required. The examining attorney must e-mail the internal TMPHOTOCOMP mailbox, with the unsent examiner’s amendment attached, along with instructions for entering the requested amendment. The body of the e-mail message must include a statement that republication is not required. The Office of Trademark Program Control will enter and mail the examiner’s amendment.
The granting of a petition to examine an amendment between issuance of the notice of allowance and filing of the statement of use does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use (unless the notice of allowance is cancelled). Regardless of whether an applicant has received a response to a proposed amendment, the applicant must file its extension request or statement of use when it becomes due. The extension request or statement of use may refer to the proposed amended identification.
See TMEP §1505.03–1505.03(b) for examples of situations where republication is and is not required.