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.