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 three-month response period. See TMEP §711.03 regarding supplemental Office actions.

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, §§1104.03–1104.03(c) regarding the time for filing an amendment to allege use, §1104.07 regarding an amendment to allege use filed with a notice of appeal or after commencement of an appeal, §1104.09 regarding acceptance of an amendment to allege use that meets minimum filing requirements, and §§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 §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 properly signed. See 37 C.F.R. §2.76(b)(1). See 37 C.F.R. §2.193(e)(1)  and TMEP §611.03(a) regarding who may sign a verification.

If the amendment to allege use is not filed within a reasonable time after its execution, 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 (defining a "reasonable time" for filing after execution of documents filed in a §1 application).

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)(iv). To incorporate the goods/services in the application by reference, the applicant may elect the TEAS form option that states that "the mark is in use in commerce on or in connection with all of the goods/services, or to indicate membership in the collective organization listed in the application or Notice of Allowance or as subsequently modified for this specific class." The form requires the applicant to designate the goods/services for each class for which use is being asserted.

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.

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 trademark specimens, §§1301.04-1301.04(j) regarding service mark specimens, §§1202–1202.19 and §§1301.02–1301.02(f) regarding use as a trademark or service mark and §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 amending the dates of use.

See TMEP §904.02 regarding requirements for 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 for a permitted paper filing (see TMEP §301.02), 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 charged back, or a check is returned unpaid for a permitted paper filing, 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.