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  The examining attorney should advise the applicant that the application will be withdrawn from publication if the amendment to allege use is not withdrawn.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Amendment to Allege Use Withdrawn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).