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)(10). 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.