1109.16 Correcting Defects in Statement of Use

The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b) ) before the expiration of the deadline 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). Other defects may be cured after the expiration of the statutory filing period, within the period for response to the Office action notifying the applicant of the defect. See TMEP §1109.16(a) regarding defects that must be cured before the expiration of the statutory filing period.

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 the 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, 1109.15(a).

When refusing registration on the above grounds, the examining attorney must 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).

1109.16(b) Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Statutory Requirements

When the examining attorney determines that the applicant did not meet the statutory requirements within the period for filing the statement of use, the examining attorney must issue an Office action refusing registration on the ground that the applicant did not file a statement of use that meets the requirements of 15 U.S.C. §1051(d)(1). If there is time remaining in the statutory filing period, the Office action should state that the deficiency must be cured before the expiration of the deadline for filing the statement of use.

If there is no time remaining in the statutory filing period, the examining attorney must issue an Office action with a six-month response clause, stating that the application will be abandoned for failure to timely file a statement of use that meets the requirements of §1(d)(1) of the Act. Even though the statutory filing period has expired, the Office action must include 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.

If the applicant fails to respond to the Office action, the application will be abandoned for failure to respond. If the applicant responds to the Office action, but does not establish that the requirements for filing a statement of use had been satisfied as of the expiration of the deadline for filing the statement of use, the examining attorney will make the refusal of registration final. If the applicant does not respond, the application will be abandoned for failure to respond to the final refusal.

See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that the applicant did not comply with the statutory requirements for filing the statement of use within the statutory filing period.

1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Statutory Filing Requirements

In limited circumstances, an applicant may file a request for an extension of time to file a statement of use after filing a statement of use, in order to gain more time to comply with the statutory requirements for filing the statement of use (sometimes called an "insurance" extension request). An applicant may file an extension request after filing a statement of use only if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). See TMEP §1108.03 regarding the time periods and requirements for filing an "insurance" extension request, and TMEP §1108.03(a) regarding the procedures for processing such a request.

The filing of an "insurance" extension request is not in itself a proper response to an Office action, and does not extend the six-month period for response to the Office action. See TMEP §1109.16(d).

Example: Assume that a notice of allowance issues July 3, 2009, the applicant files a statement of use on July 22, 2009, and the examining attorney issues an Office action requiring substitute specimens on August 6, 2009. The applicant may file an "insurance" extension request on or before January 3, 2010, which would give the applicant until July 3, 2010 to make proper use of the mark. However, the applicant must file a response to the Office action on or before February 6, 2010. See TMEP §1109.16(d) for information about responding to an Office action in this situation.

1109.16(d) Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use

In limited circumstances, when the applicant files a timely "insurance" extension request in conjunction with or after filing a statement of use ( see TMEP §§1108.03–1108.03(a), 1109.16(c)) and the examining attorney has issued an Office action, the six-month period for response to the Office action will expire before the statutory deadline for filing the statement of use. To avoid abandonment, the applicant must respond within six months of the issuance date of the Office action, regardless of the expiration date of the time for filing the statement of use.

If the time for filing the statement of use expires after the time for responding to a nonfinal Office action, and the applicant believes that it can cure a deficiency raised in the Office action before expiration of the time for filing the statement of use, the applicant should timely respond to the Office action, stating in the response that it intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period.

If the applicant files such a response, the examining attorney must not suspend the application. Instead, the examining attorney must make final any outstanding refusal or requirement. The applicant will then have six months from the issuance date of the final Office action to cure statutory deficiencies. Of course, applicant still must comply with the statutory requirements for filing the statement of use before the expiration date of the deadline for filing the statement of use.

Example: If the deadline for filing the statement of use expires on July 3, 2009, and the examining attorney issues a final Office action requiring substitute specimens on March 4, 2009, the applicant has until September 4, 2009 to file the substitute specimens, but the applicant must verify that the specimens were in use in commerce on or before July 3, 2009.

If the applicant files a proper response to the final Office action within six months of the date of issuance, and complies with the statutory requirements for filing the statement of use before the expiration of the period for filing the statement of use, the examining attorney will withdraw the refusal based on non-compliance with the statutory requirements for filing the statement of use.

If the time for filing the statement of use expires after the time for responding to a final Office action, and the applicant can overcome any grounds for refusal or comply with any requirement raised in the final action before expiration of the time for filing the statement of use, but not within the time for responding to the final Office action, the applicant must still file a timely response to the Office action. The response must state that the applicant intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period and request suspension of the application. The examining attorney will then suspend the application for only the amount of time remaining in the statutory period for filing the statement of use. The applicant will then have until the end of the extension period to overcome any grounds for refusal or comply with any requirement.

Example: The notice of allowance issues on September 30, 2010 and a statement of use and/or extension request is due on or before March 30, 2011. The applicant files a statement of use on October 15, 2010. On November 5, 2010, the examining attorney issues an Office action regarding the acceptability of the specimen and the applicant responds on November 8, 2010 but does not correct the specimen deficiency. The examining attorney then issues a final Office action on November 29, 2010 regarding the specimen issue. If the applicant files a timely "insurance" extension request on or before March 30, 2011, this would extend the time to perfect the statement of use to September 30, 2011. However, the applicant must still respond to the final Office action by May 29, 2011 (i.e., within six months of issuance of the final Office action). The response must include a request to suspend the application or the application will be abandoned for failure to respond. The examining attorney would then suspend the application until September 30, 2011, which is the date of expiration of the extension period and the deadline for complying with the statutory requirements for a statement of use.

If the applicant files a response to the final Office action prior to the expiration of the statutory period for filing a statement of use, and the response overcomes the grounds for refusal and/or complies with any requirement, the examining attorney will remove the application from suspension and withdraw the refusal.

If the applicant files a response to the final Office action prior to expiration of the statutory period for filing the statement of use, but the response does not overcome the grounds for refusal and/or comply with any requirement, the examining attorney must issue an "Examiner’s Subsequent Final Refusal," thereby reissuing the final refusal, and the applicant will have six months to respond. See TMEP §716.06.

1109.16(e) Applicant’s Recourse After Refusal of Registration

If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use within the time permitted, as set forth in 37 C.F.R. §2.88(e) (see TMEP §1109.01), the applicant may file a petition to revive within the deadlines specified in 37 C.F.R §2.66(a). However, if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(e), but the examining attorney refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use), the applicant cannot overcome the refusal by filing a petition to revive under 37 C.F.R. §2.66. TMEP §1714.01(f)(ii)(B). The applicant’s only recourse is to appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board.

See 37 C.F.R. §2.88(b) and TMEP §1109.16(a) regarding the statutory requirements that must be met within the statutory 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).