1104 Amendment to Allege Use Under §1(c) of the Act
As previously stated, an intent-to-use applicant under 15 U.S.C. §1051(b) must file 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) before issuance of the registration. This section pertains only to amendments to allege use. Statements of use are discussed in TMEP §§1109-1109.18.
An amendment to allege use is treated as a non-responsive filing. Therefore, filing an amendment to allege use does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in the case, including filing a notice of appeal to the Board or a petition to the Director. See 37 C.F.R. §2.63(d). See TMEP §1104.07 regarding the filing of an amendment to allege use in conjunction with an appeal. Therefore, the applicant must file a separate response to any outstanding Office action. Failure to respond to an outstanding Office action will result in abandonment of the application. See TMEP §718.06 regarding notice of abandonment for failure to respond.
1104.01 Minimum Filing Requirements for an Amendment to Allege Use
The amendment to allege use must include the following minimum elements before it will be referred to the examining attorney for examination on the merits:
- (1) the prescribed fee for at least one class;
- (2) one specimen of the mark as used in commerce; and
- (3) a verification or declaration signed by the applicant or a person properly authorized to sign on behalf of the applicant that the mark is in use in commerce.
An amendment to allege use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. §2.76(c) for a verified statement that the mark is in use in commerce. Cf. In re Carnicon Dev. Co., 34 USPQ2d 1541, 1543 (Comm’r Pats. 1992) (holding that the petitioner’s verified date of first use in commerce and the statement that the mark was used in advertising combined to substantially comply with the "the mark is in use in commerce" requirement for purposes of filing a statement of use); In re Conservation Tech. Inc., 25 USPQ2d 1079, 1080 (Comm’r Pats. 1992) (finding, for purposes of the requirement that the statement of use state that "the mark is in use in commerce," the wording "in use in commerce at least since" satisfied the requirement based on the term "since," defined as "from a definite past time until now"). The examining attorney will require an allegation that the "mark is in use in commerce" during examination.
See TMEP §1104.08 regarding the requirements for a complete amendment to allege use.
1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements
A legal instruments examiner ("LIE") will conduct a preliminary review of an amendment to allege use to determine whether it is timely and complies with the minimum requirements of 37 C.F.R. §2.76(c). If so, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits.
With respect to the requirement that the amendment to allege use include a verification or declaration signed by the applicant, or a person properly authorized to sign on behalf of the applicant, that the mark is in use in commerce, the LIE will review the document only to determine whether it bears a signed verification stating that the mark is in use in commerce. The examining attorney will determine whether the amendment to allege use was filed by the owner. See TMEP §1104.10(b)(i).
See TMEP §1104.01(b) regarding processing an amendment to allege use that does not meet minimum filing requirements, and TMEP §1104.03(c) regarding processing an untimely amendment to allege use.
1104.01(b) Processing an Amendment to Allege Use that Does Not Meet Minimum Filing Requirements
If an amendment to allege use is timely, but does not comply with the minimum filing requirements of 37 C.F.R. §2.76(c) ( see TMEP §1104.01), the LIE will advise the applicant in writing of the deficiency. The applicant may correct the deficiency, provided the applicant does so before the mark is approved for publication. 37 C.F.R. §2.76(d). If an acceptable amendment to correct the deficiency is not filed before the mark is approved for publication, the amendment to allege use will not be referred to the examining attorney and will not be examined on the merits. Id.
If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an electronic funds transfer ("EFT") or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the LIE will advise the applicant that the applicant must repay the fee before the mark is approved for publication, or the amendment to allege use will not be examined. In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. §2.6(b)(12). This processing fee must be paid even if the applicant withdraws the amendment to allege use. See TMEP §405.06 regarding payments that are refused.
If the amendment to allege use does not include a specimen, the LIE will advise the applicant that the applicant must submit a specimen, supported by an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen is in use in commerce on or in connection with the goods/services (or stating that the specimen is in use in commerce in connection with the collective membership organization, for collective membership marks), before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.
If the amendment to allege use is not signed, the LIE will notify the applicant of the deficiency and advise that the applicant must submit a properly signed amendment to allege use before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.
An amendment to allege use that does not meet the minimum filing requirements will remain in the record. If the applicant does not correct all deficiencies before approval of the mark for publication, the examining attorney will not examine the amendment to allege use. In such a case, if the applicant has submitted the fee, the fee will not be refunded and cannot be applied to a later-filed statement of use. If the mark is published for opposition and a notice of allowance issues, the applicant must file a statement of use or request for extension of time to file a statement of use within six months of the date of issuance to avoid abandonment of the application.
If the applicant wishes to establish that the amendment to allege use as filed met the minimum requirements of 37 C.F.R. §2.76(c), the applicant must file a petition under 37 C.F.R. §2.146. In addition to the petition fee (37 C.F.R. §2.6(a)(15) ), the petition should include a copy of the amendment to allege use and specimen, and any evidence establishing that the amendment to allege use as filed met the minimum filing requirements. See Chapter 1700 for additional information about petitions. If the petition is granted, the amendment to allege use will be considered filed on the date it was originally received in the USPTO.
See TMEP §1104.03(c) regarding processing an untimely amendment to allege use.
1104.01(c) Processing Defective Amendment to Allege Use Filed with Other Amendments
After the LIE has taken appropriate action on a defective amendment to allege use ( see TMEP §1104.01(b)), the LIE will process any other amendments filed with the amendment to allege use and refer the application to the assigned examining attorney for appropriate action on those other amendments.
If the amendment to allege use did not meet the minimum filing requirements of 37 C.F.R. §2.76(c), the examining attorney will act on any other amendments in the application without considering the amendment to allege use. The examining attorney should issue requirements or refusals according to standard examination procedure without considering the amendment to allege use. Any specimen submitted becomes part of the record and may be relied on in relation to issues other than use.
If the examining attorney determines that the LIE erred in holding that the amendment to allege use did not meet the minimum filing requirements of 37 C.F.R. §2.76(c), the examining attorney should advise the applicant by telephone or e-mail that the amendment to allege use will be examined on the merits and to disregard the LIE’s action, and should enter an appropriate Note to the File in the record.
1104.02 Form of Amendment to Allege Use
To expedite processing, and ensure that the legal requirements are satisfied, the USPTO recommends that an applicant file an amendment to allege use using the Trademark Electronic Application System ("TEAS") at http://www.uspto.gov. Alternatively, the owner may call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed paper form ("Trademark/Service Mark Allegation of Use") that may be used to file either a statement of use or an amendment to allege use for a trademark or service mark. The applicant may mail, fax, or hand-deliver the completed form to the USPTO. If the form is faxed, it must be accompanied by an authorization to charge the filing fee to a credit card or deposit account. The credit card authorization form is available at http://www.uspto.gov/web/forms/2038.pdf. If the amendment to allege use is filed through TEAS, payment must be made by credit card, deposit account, or EFT. Paper forms may be delivered by hand or courier to the Trademark Assistance Center ("TAC"), at James Madison Building, East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia. TAC is open 8:30 a.m. to 5:00 p.m., Eastern Time, Monday through Friday, except on Federal holidays within the District of Columbia.
If the applicant does not file the amendment to allege use electronically or use the pre-printed paper form designed by the USPTO, the applicant should submit the amendment to allege use in a document separate from other amendments, with the caption "Amendment to Allege Use" appearing at the top of the first page of the document. 37 C.F.R. §2.76(b)(6). However, this format is not mandatory. The USPTO will accept and enter any document that includes an amendment to allege use, if it meets the minimum filing requirements set forth in 37 C.F.R. §2.76(c), regardless of whether it is properly titled or includes other amendments.
See TMEP §1104.01 regarding the minimum filing requirements that must be met before an amendment to allege use can be referred to an examining attorney for examination, and TMEP §1104.08 regarding the requirements for a complete amendment to allege use.
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.
1104.04 Processing Timely Amendment to Allege Use Located After Publication
If an amendment to allege use is timely ( see TMEP §1104.03) and complies with the minimum filing requirements so that it may be examined on the merits ( see TMEP §1104.01), but the mark was published for opposition before the amendment to allege use was examined, the USPTO will proceed as follows.
The examining attorney will contact the applicant or the applicant’s attorney by telephone or e-mail, and give the applicant the opportunity to withdraw the amendment to allege use. The examining attorney should advise the applicant that the application will be withdrawn from publication if the amendment to allege use is not withdrawn. See 37 C.F.R. §2.76(f) and TMEP §1104.11 regarding withdrawal of amendment to allege use.
Amendment to Allege Use Withdrawn
If the applicant withdraws the amendment to allege use, the examining attorney should advise applicant that a notice of allowance will issue if the application is not successfully opposed, and that the applicant must file a statement of use, or request for an extension of time to file a statement of use, within six months after the issuance of the notice of allowance. The examining attorney should advise applicant that, instead of filing a statement of use, the applicant may file a written request that the USPTO treat the amendment to allege use as a statement of use. Such a request must be filed within six months after the issuance of the notice of allowance, and should be faxed to the ITU/Divisional Unit at (571) 273-9550. The examining attorney should enter a Note to the File in the record reflecting the substance of the communication with the applicant. The filing date of the statement of use will be the date of receipt of the applicant’s written request to treat the amendment to allege use as a statement of use. See TMEP §1104.11 regarding withdrawal of an amendment to allege use prior to publication.
The applicant has the option of receiving a refund of the filing fee for the amendment to allege use, or applying the fee toward the statement of use. If the applicant requests a refund, the examining attorney should ask an LIE to arrange for the refund.
Because §1(d)(1) of the Trademark Act, 15 U.S.C. §1051(d)(1), explicitly requires that a statement of use be filed within six months after the issuance date of the notice of allowance, the USPTO cannot process the amendment to allege use as a statement of use unless the applicant files a written request within six months after the issuance date of the notice of allowance. If the applicant does not file a statement of use, a request for an extension of time to file a statement of use, or a written request to treat the amendment to allege use as a statement of use within six months after the issuance of the notice of allowance, the application will be abandoned, even if the amendment to allege use is still in the record and the filing fee for the amendment to allege use has not been refunded.
Amendment to Allege Use Not Withdrawn
If the applicant does not withdraw the amendment to allege use, and no notice of allowance has issued, the examining attorney must withdraw the application from publication. If the notice of allowance has issued, the examining attorney must ask the ITU/Divisional Unit to cancel the notice of allowance. The examining attorney should enter an appropriate Note to the File in the record, and then examine the amendment to allege use. If the amendment to allege use can be approved, and does not raise any issues that require the examining attorney to issue an Office action requiring a response, the examining attorney should approve the amendment to allege use. The mark must then be republished.
If examination of the amendment to allege use raises issues that would require the examining attorney to issue requirements or refusals in an Office action, the examining attorney should request jurisdiction for the purpose of issuing the relevant requirements or refusals. See TMEP §1504.04(a). The proposed Office action setting forth the relevant requirements or refusals must accompany the request for jurisdiction. If the applicant ultimately complies with all requirements and overcomes all refusals, the amendment to allege use will be approved. The mark must then be republished.
Applications that are the Subject of an Opposition
If a notice of opposition has been filed when a timely amendment to allege use is associated with the application, the Board will usually suspend the opposition proceeding and remand the application to the examining attorney for examination of the amendment to allege use. The examining attorney should follow the procedures explained above, except that no request for jurisdiction is necessary. Once the amendment to allege use is ultimately approved or withdrawn, the application should be referred back to the Board for appropriate action. Trademark Trial and Appeal Board Manual of Procedure ("TBMP") §219.
Applications that are the Subject of an Extension of Time to Oppose
If the application is under an extension of time to file an opposition when the amendment to allege use is associated with the application, the potential opposer must continue to file further request(s) for extension(s) of time to oppose, or file a notice of opposition, if it wishes to preserve its right to oppose if the amendment to allege use is withdrawn by the applicant or approved by the examining attorney. TBMP §219. The Board will not suspend the potential opposer’s time to file a notice of opposition. See notice at 68 Fed. Reg. 55748, 55760 (Sept. 26, 2003).
1104.05 Amendment to Allege Use Filed in Conjunction with Application
If an applicant files an intent-to-use application under 15 U.S.C. §1051(b), and, at the same time, files an amendment to allege use asserting dates of use before the filing date of the application, the applicant will be required to comply with all requirements related to the amendment to allege use, including the payment of the required fees for all classes.
1104.06 Processing Amendment to Allege Use Received Before Application Is Assigned to an Examining Attorney
If an amendment to allege use is received before an application has been assigned to an examining attorney, the LIE will review the amendment to allege use to determine whether it complies with the minimum filing requirements of 37 C.F.R. §2.76(c) and will take appropriate action. See TMEP §§1104.01–1104.01(c). If the amendment to allege use complies with the minimum filing requirements, it will be placed in the record and examined on the merits when the application is assigned to an examining attorney. If it does not, the LIE will advise the applicant in writing of the deficiency and advise the applicant that it must correct the deficiency before the mark is approved for publication, or the amendment to allege use will not be examined on the merits. See 37 C.F.R. §2.76(d).
1104.07 Amendments to Allege Use and Ex Parte Appeals
An amendment to allege use may be filed together with a notice of appeal to the Trademark Trial and Appeal Board, or it may be filed while an appeal is pending.
Once the appeal is filed, the Board has jurisdiction over the application. If the applicant files the amendment to allege use with the notice of appeal, the Board will institute the appeal, suspend action on the appeal, and remand the case to the examining attorney to examine the amendment to allege use. When the applicant files the amendment to allege use after commencement of the appeal, the Board may, in its discretion, suspend action on the appeal and remand the application to the examining attorney for consideration of the amendment to allege use, or it may continue action on the appeal, thus deferring examination of the amendment to allege use until after disposition of the appeal.
If the Board remands the application, the examining attorney should continue examination according to standard examining procedures until final resolution of any new issues that arise in the examination of the amendment to allege use. If all issues are resolved or made the subject of a final action, the examining attorney should refer the application back to the Board for resumption of the appeal. TBMP §1206.01.
If the examining attorney withdraws the refusal or requirement that is the subject of the appeal, he or she should advise the applicant or the applicant’s attorney by telephone or e-mail, and enter an appropriate Note to the File in the record.
1104.08 Requirements for a Complete Amendment to Allege Use
Trademarks and Service Marks
The requirements for a complete amendment to allege use are:
- (1) a verified statement that the applicant is believed to be the owner of the mark and that the mark is in use in commerce, specifying the dates of first use of the mark anywhere and first use of the mark in commerce, and setting forth or incorporating by reference those goods/services specified in the application on or in connection with which the mark is in use in commerce;
- (2) one specimen per class of the mark as used in commerce that meets the requirements of 37 C.F.R. §2.56; and
- (3) the prescribed fee for each class ( see 37 C.F.R. §2.6(a)).
Collective Marks
The requirements for a complete amendment to allege use are:
- (1) a verified statement that: the applicant is believed to be the owner of the mark; the applicant is exercising legitimate control over the use of the mark in commerce; and the mark is in use in commerce, specifying the dates of first use of the mark anywhere and first use of the mark in commerce, and setting forth or incorporating by reference the goods/services/nature of the collective membership organization specified in the application on or in connection with which the mark is in use in commerce;
- (2) one specimen per class of the mark as used in commerce that meets the requirements of 37 C.F.R. §2.56;
- (3) the prescribed fee for each class (see 37 C.F.R. §2.6(a) ); and
- (4) a statement specifying the nature of the applicant’s control over the use of the mark by the members (37 CF.R. §2.44(a)(4)(i)(A); TMEP §1303.01(a)(i)(A)).
Certification Marks
The requirements for a complete amendment to allege use are:
- (1) a verified statement that: the applicant is believed to be the owner of the mark; the applicant is exercising legitimate control over the use of the mark in commerce; and the mark is in use in commerce, specifying the dates of first use of the mark anywhere and first use of the mark in commerce, and setting forth or incorporating by reference those goods/services specified in the application on or in connection with which the mark is in use in commerce;
- (2) one specimen per class of the mark as used in commerce that meets the requirements of 37 C.F.R. §2.56;
- (3) the prescribed fee for each class ( see 37 C.F.R. §2.6(a) );
- (4) a statement specifying what the applicant is certifying about the goods or services in the application (37 C.F.R. §2.45(a)(4)(i)(A); TMEP §1306.03(a));
- (5) a copy of the certification standards governing use of the certification mark (37 C.F.R. §2.45(a)(4)(i)(B); TMEP §1306.03(b)); and
- (6) a statement that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant (37 C.F.R. §2.45(a)(4)(i)(C); TMEP §1306.03(c)).
1104.09 Acceptance of Amendment to Allege Use that Meets Minimum Filing Requirements by Examining Attorney
At the outset, the examining attorney must accept the submission of the amendment to allege use if it is timely filed and meets the minimum filing requirements, unless (1) USPTO records show title in a party other than the party filing the amendment to allege use or (2) the applicant specifies an intention to retain goods/services not yet in use (or an intention to retain the collective membership mark not yet in use) and fails to file a request to divide. See TMEP §§1104.01, 1104.03–1104.03(c), 1104.10(b)(i), 1104.10(b)(ii). Acceptance of the amendment to allege use does not signify that all the requirements of 37 C.F.R. §§2.76(b) for a complete amendment to allege use have been met and the application is in condition for approval for publication.
The examining attorney's acceptance of the amendment to allege use ensures that (1) a computer-generated notice issues advising the applicant that the amendment to allege use has been accepted and forwarded to the examining attorney for substantive review and (2) the basis of the application is changed from §1(b) to §1(a). Thus, even if the amendment to allege use raises issues related to, for example, the dates of use, inconsistencies between the mark on the drawing and the mark on the specimen, ornamentation, or descriptiveness, the examining attorney must accept it before issuing an Office action that addresses the relevant refusals or requirements.
See TMEP §§1104.10–1104.10(b)(vii) regarding examination of an amendment to allege use for compliance with statutory requirements.
1104.10 Examination of Amendment to Allege Use on the Merits for Compliance with Statutory Requirements
After accepting an amendment to allege use that meets the requirements discussed above ( see TMEP §§1104.01, 1104.03–1104.03(c), 1104.09), the examining attorney will then examine it on the merits to determine compliance with all statutory requirements (e.g., valid ownership, acceptable specimen, and fees for all classes). If all statutory requirements are met, no further action with regard to the amendment to allege use is necessary.
1104.10(a) Issuance of Office Action Related to Amendment to Allege Use
If, after examination on the merits, the examining attorney determines that the amendment to allege use necessitates any refusals or requirements, an Office action must be issued. Before issuing the Office action, the examining attorney must accept the amendment to allege use. See TMEP §1104.09. If the amendment to allege use was filed before the application was assigned to the examining attorney, the Office action must address all refusals or requirements related to both the application and the amendment to allege use. If the amendment to allege use is referred to an examining attorney after issuance of an Office action, the examining attorney must accept it, if appropriate, and issue a supplemental Office action that supersedes any outstanding action, incorporates all outstanding refusals and/or requirements, and provides a new six-month response period.
Generally, the Office action must be nonfinal, because the issues arising from examination of the amendment to allege use would be raised for the first time. In rare cases, an issue arising from examination of the amendment to allege use will already have been raised. For example, if the examining attorney issued a final refusal of registration in a §1(a) application because the specimen failed to show use of the mark in commerce or failed to demonstrate use as a mark, the applicant may amend the application to seek registration under §1(b). If the applicant subsequently submits an amendment to allege use that includes the same specimen (or a different specimen that is deficient for the same reason), no new issue is raised because the requirement to submit a specimen showing acceptable use of the mark in commerce has already been raised. Cf. In re GTE Educ. Servs., 34 USPQ2d 1478, 1480 (Comm'r Pats. 1994) (holding that examining attorney properly determined that no new issue had been raised in request for reconsideration of final refusal based on inadequate specimens, where the substitute specimens submitted with the request were deficient for the same reason as the original specimens).
If the application is suspended at the time the amendment to allege use is referred for examination, the examining attorney must accept and review it. If no further action on the amendment to allege use is required because all statutory requirements are satisfied, the application must be resuspended. If the amendment to allege use does not meet all statutory requirements, the examining attorney must remove the application from suspension and issue a nonfinal Office action that maintains and continues any requirements and refusals that were operative at the time of the suspension.
If the amendment to allege use is referred for examination at the same time as a response to an outstanding Office action, or when a response is awaiting review, the examining attorney must accept it and review both the response and the amendment to allege use. If the amendment to allege use does not meet all statutory requirements, the examining attorney must issue a new nonfinal Office action that includes all refusals and/or requirements related to the amendment to allege use and maintains and continues all refusals and/or requirements not overcome or satisfied by the response. If the amendment to allege use meets all statutory requirements, the examining attorney must issue a final refusal regarding all refusals and/or requirements not overcome or satisfied by the response, or approve the mark for publication if all refusals and/or requirements have been overcome or satisfied.
See TMEP §§1104.01–1104.01(c) regarding the minimum filing requirements for an amendment to allege use, TMEP §§1104.03–1104.03(c) regarding the time for filing an amendment to allege use, TMEP §1104.07 regarding an amendment to allege use filed with a notice of appeal or after commencement of an appeal, TMEP §1104.09 regarding acceptance of an amendment to allege use that meets minimum filing requirements, and TMEP §§1104.10–1104.10(b)(vii) regarding examination of an amendment to allege use on the merits.
1104.10(b) Common Examination Issues Related to Amendments to Allege Use
The following sections represent the most common issues to be considered during examination of an amendment to allege use. These sections do not exhaust all possible grounds for issuing a refusal or making a requirement. Moreover, any amendments filed with an amendment to allege use that do not pertain to use of the proposed mark (e.g., changes to the identification of goods/services or drawing), must be separately considered and examined according to standard examination procedures.
1104.10(b)(i) Ownership
The examining attorney must confirm that the proper party has filed the amendment to allege use. Only the applicant or a valid assignee under §10 of the Trademark Act, 15 U.S.C. §1060, may file an amendment to allege use. If USPTO records show title in a party other than the party filing the amendment to allege use, the examining attorney must refuse registration on the ground that the amendment to allege was not filed by the owner of record. See 37 C.F.R. §2.76(b)(1)(i). In such cases, the examining attorney must withhold acceptance of the amendment to allege use until the party who filed the amendment to allege use establishes ownership. If the party filing the amendment to allege use was not the owner of the mark at the time of filing, the true owner may file a substitute amendment to allege use (including the filing fee for each class) on or before the date the application is approved for publication.
If the party filing the amendment to allege use was the owner at the time of filing, the party may submit evidence to establish chain of title within the response period specified in the Office action. See 37 C.F.R. §§3.71(d), 3.73(b). To establish ownership, the party who filed the amendment to allege use must either: (1) record an assignment or other document of title with the Assignment Recordation Branch, and include a statement in the response to the Office action that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another or an explanation, in the form of an affidavit or declaration under 37 C.F.R. §2.20, that a valid transfer of legal title has occurred. 37 C.F.R. §3.73(b)(1). See TMEP §502.01 regarding establishing the right to take action in an application or registration.
If an amendment to allege use is filed by the owner of the mark, but there is a minor error in the manner in which the name of the owner is identified, the mistake may be corrected by amendment. See TMEP §1201.02(c) for examples of correctable and non-correctable errors in how the applicant is identified.
See 37 C.F.R. §3.85 and TMEP §502.02(a) regarding the issuance of a registration certificate in the name of the new owner, and TMEP §502.02(c) regarding an examining attorney’s handling of an application after the mark has been assigned.
1104.10(b)(ii) Verification and Date of Execution
The verification must be signed by the applicant or a person properly authorized to sign on behalf of the applicant. See 37 C.F.R. §2.76(b)(1). See 37 C.F.R. §2.193(e)(1) and TMEP §611.03(a) as to who is properly authorized to sign on behalf of an applicant. Generally, the USPTO will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory’s authority to sign.
If the amendment to allege use is not filed within one year after it is signed, the examining attorney must require a substitute or supplemental verification or declaration under 37 C.F.R. §2.20 stating that, for a trademark or service mark, the mark is in use in commerce, or, for a collective or certification mark, the mark is in use in commerce and the applicant is exercising legitimate control over such use. See 37 C.F.R. §2.76(g); TMEP §804.03.
See TMEP §§611–611.06(h) regarding signature on correspondence filed in the USPTO.
1104.10(b)(iii) Identification of Goods/Services
The examining attorney must examine the identification of goods/services in an amendment to allege use to ensure that it conforms to the goods/services specified in the application. The applicant may delete, limit, or clarify the goods/services, but may not add to or expand the identification. 37 C.F.R. §2.71(a). The amendment to allege use must specify all the goods/services for which the applicant seeks registration under §1(a), by listing or incorporating by reference the goods/services on or in connection with which the mark is in use in commerce. See 37 C.F.R. §2.76(b)(1)(ii). To incorporate the goods/services by reference, the applicant may state that the mark is in use on "those goods/services identified in the application" or "those goods/services identified in the application except . . . [followed by an identification of the goods/services to be deleted]."
If goods/services identified in the application are omitted from the amendment to allege use and it is not accompanied by a request to divide, the omitted goods/services must be deleted from the application and the amendment to allege use accepted. However, if an amendment to allege use is submitted for only some of the goods/services and the applicant specifies an intention to retain the goods/services not yet in use, the amendment to allege may not be accepted until a request to divide the goods/services that are not in use is filed. See 37 C.F.R. §2.76(a)(2); TMEP §1104.03(a).
If the amendment to allege use includes an amended identification of goods/services, to determine whether the amended identification is acceptable and within the scope of the previous identification, the amended identification must be examined in relation to the last acceptable identification of record. TMEP §1402.07(d), (e). When the amended goods/services exceed the scope of a previous acceptable identification, the amended goods/services must be refused. If both an amendment to allege use and a response to an outstanding Office action are received and the two filings contain different amendments to the identification of goods/services, this creates an ambiguity that must be clarified by the applicant.
If the applicant lists all the goods/services identified in the application in the section of a pre-printed amendment to allege use paper form designated for the identification of goods/services that are not in use (the effect of which is a representation that the mark was not used in connection with any goods/services), the USPTO will not presume that the applicant has expressed an intention to delete these goods/services, and the examining attorney must inquire as to the discrepancy.
1104.10(b)(iii)(A) Identification of Nature of Collective Membership Organization
The examining attorney must ensure that the identification of the nature of the collective membership organization in an amendment to allege use conforms to that specified in an application for a collective membership mark. The applicant may delete, limit, or clarify the description of the collective membership organization, but may not add to or expand the identification. See 37 C.F.R. §2.71(a). See TMEP §1304.02(c) regarding identifications in applications for collective membership marks.
1104.10(b)(iv) Use in Commerce and Dates of Use
An amendment to allege use must include a verified statement that "the mark is in use in commerce," and must specify the dates of first use of the mark and first use of the mark in commerce for each class. 37 C.F.R. §2.76(b)(1)(ii)-(iii). The date of first use in commerce may not be earlier than the date of first use anywhere. TMEP §903.03. In addition, the dates of use may not be after the date the amendment to allege use was signed, because current use of the mark must be properly alleged; an applicant may not allege use that has not yet occurred. See 37 C.F.R. §2.76(b)(1)(ii); see also TMEP §§903.04 (regarding amending dates of use) 903.06(a) (regarding discrepancies between dates of use and date of execution).
The applicant may amend the dates of use if the amendment is supported with an affidavit or declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.71(c). The applicant may not amend the dates of use to recite dates of use that are subsequent to the filing of the amendment to allege use. However, the applicant may withdraw the amendment to allege use. 37 C.F.R. §2.76(f).
The requirement for a verified statement that "the mark is in use in commerce" is a minimum filing requirement that must be satisfied before the amendment to allege use may be examined on the merits. 37 C.F.R. §2.76(c)(3). See TMEP §§1104.01–1104.01(c) regarding amendments to allege use that do not meet minimum filing requirements.
See TMEP §903 regarding dates of use for a trademark or service mark application. See TMEP §§1303.01(a)(i)(B), 1304.02(a)(i)(B), and 1306.02(a)(i)(A) regarding dates of use for a collective or certification mark application.
1104.10(b)(v) Specimen
An amendment to allege use must include a specimen for each class. The examining attorney must review the specimen for compliance with all relevant requirements. See TMEP §§904.03–904.03(m) regarding material that is appropriate as a trademark specimen, TMEP §§1301.04 et seq. regarding material that is appropriate as a service mark specimen, and TMEP §§1202–1202.17(e)(vi) and 1301.02–1301.02(f) regarding use as a trademark or service mark. See TMEP §§ 1303.01(a)(i)(C), 1304.02(a)(i)(C), and 1306.02(a)(i)(B) regarding material appropriate as a collective or certification mark specimen.
If the applicant submits a substitute specimen in conjunction with an amendment to allege use, the applicant must verify that the substitute specimen was in use in commerce on or in connection with the goods/services (or to indicate membership in the collective organization, for a collective membership mark) prior to filing the amendment to allege use. Similarly, if the applicant submits an additional specimen in support of a multiple-class application that is not identical to the specimen originally filed, the applicant must verify that the new specimen was in use in commerce on or in connection with the goods/services (or to indicate membership in the collective organization) prior to filing the amendment to allege use. See TMEP §904.05 regarding affidavit supporting substitute specimens.
If, in fact, the mark was first used on dates other than those asserted in the amendment to allege use, the dates of use must be corrected. 37 C.F.R. §2.71(c). See TMEP §§903.04 and 1104.10(b)(iv) regarding amendment of the dates of use.
If the amendment to allege use is filed through TEAS, the specimen must be a digitized image in .jpg or .pdf format. 37 C.F.R. §2.56(d)(4). See TMEP §904.02(a) for additional information about electronically filed specimens.
1104.10(b)(vi) Drawing
Under 37 C.F.R. §2.51(b), the drawing in an intent-to-use application must be a substantially exact representation of the mark as intended to be used and as actually used, as shown on the specimen filed with the amendment to allege use. An applicant may not amend the mark in the original drawing if the amendment constitutes a material alteration of the mark. 37 C.F.R. §2.72(b)(2); TMEP §§807.14–807.14(f). The same standards that apply to use applications in determining whether the specimens supports use of the mark and whether an amendment to the drawing can be permitted also apply to amendments to allege use.
Therefore, if the mark in the drawing filed with the original application is not a substantially exact representation of the mark as used on the specimen filed with the amendment to allege use, the examining attorney must require: (1) either submission of a new specimen or an amendment of the mark in the drawing to agree with the mark shown on the specimen, if such an amendment would not be a material alteration of the mark as shown in the original drawing; or (2) submission of a new specimen, if amendment of the mark would be a material alteration of the mark as shown in the original drawing. See 37 C.F.R. §2.72(b)(2). See TMEP §§807.14–807.14(f) regarding material alteration.
1104.10(b)(vii) Fees
While the payment of the fee for at least one class is enough to meet the minimum filing requirements for an amendment to allege use (37 C.F.R. §2.76(c)(1) ), the examining attorney must require payment of fees to cover all classes identified in the application before approving the amendment to allege use. The applicant may amend the identification to delete class(es).
If class(es) that do not broaden the scope of the identification are added to the application after the filing of the amendment to allege use, the examining attorney must require payment of the fee(s) for filing the amendment to allege use in the added class(es), in addition to the fee(s) required by 37 C.F.R. §2.6(a)(1) for adding class(es) to the application. See TMEP §1402.06 regarding amendments to the identification, §1402.07 regarding the scope of the identification for purposes of amendment, and §1403.02(c) regarding the amount of the fee(s) for adding class(es) to an application.
If the applicant submits a filing fee that is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, a check is returned unpaid, or an EFT or credit card payment is refused or charged back by a financial institution), the examining attorney must require repayment of the fee before approving the amendment to allege use. In addition, when an EFT or credit card is refused, or a check is returned unpaid, the examining attorney must require a processing fee under 37 C.F.R. §2.6(b)(12). This processing fee must be paid even if the applicant withdraws the amendment to allege use or deletes a class(es). See TMEP §405.06 regarding payments that are refused.
1104.11 Amendment and Withdrawal of Amendment to Allege Use
The applicant may amend the amendment to allege use to correct deficiencies or errors, to overcome a refusal, or to comply with a requirement.
The applicant may withdraw the amendment to allege use at any time before approval of the mark for publication. 37 C.F.R. §2.76(f). The USPTO will not refund the fee for filing an amendment to allege use that is withdrawn (except as provided in TMEP §1104.04) and the fee cannot be applied toward another allegation of use filed after the amendment to allege use is withdrawn. The applicant may authorize the withdrawal via an examiner’s amendment. To process the withdrawal, if the amendment to allege use is timely and meets the minimum filing requirements, it must first be accepted before it may be withdrawn. See TMEP §§1104.01–1104.01(c) regarding minimum filing requirements for amendment to allege use, TMEP §§1104.03–1104.03(c) regarding time for filing an amendment to allege use, and TMEP §1104.09 regarding acceptance of amendment to allege use that meets minimum filing requirements. See TMEP §1109.17 regarding the prohibition against withdrawing a statement of use.
The withdrawn amendment to allege use, specimen(s), and any other materials filed with the amendment to allege use will remain part of the record. If, prior to publication, the applicant wishes to reassert use and amend the application to §1(a) after withdrawing an amendment to allege use, the applicant may not rely on the amendment to allege use that was withdrawn. Because the applicant expressly withdrew the prior amendment to allege use, it must file a new amendment to allege use in order to amend the basis to use in commerce.
If the applicant wishes to request withdrawal of an amendment to allege use during an ex parte appeal, the applicant should direct the request to the Trademark Trial and Appeal Board.
If the applicant withdraws the amendment to allege use, the application will be processed as an intent-to-use application under 15 U.S.C. §1051(b), subject to publication and issuance of a notice of allowance. After the notice of allowance issues, the applicant must file a statement of use under 15 U.S.C. §1051(d). See TMEP §§1109–1109.18 for information on statements of use.
If the amendment to allege use is withdrawn, the examining attorney will withdraw any requirements or refusals specifically related to use of the mark, such as objections related to the form of the verified statement itself, the agreement of the mark as used on the specimens with the mark shown on the drawing, or the use of the applied-for designation evidenced by the specimen. The examining attorney should also withdraw any requirement or refusal related to the execution of the amendment to allege use.
The examining attorney should maintain any requirement or refusal arising from the amendment to allege use not specifically related to the dates of use or use of the mark, such as refusals under 15 U.S.C. §§1052(e)(1), 1052(e)(2), 1052(e)(3), or 1052(e)(4). The amendment to allege use, specimen(s), and any materials submitted with the amendment to allege use may be relied on to support refusals or requirements under these sections. Furthermore, if the amendment to allege use contains an amendment to the identification and the amended identification is acceptable and within the scope of the previous identification, the amended identification remains of record and replaces all previous identifications. TMEP §§1104.10(b)(iii), 1402.07(e).