T.M.E.P. § 1104.01
Minimum Requirements for Filing an Amendment to Allege Use
Executive summary:
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1104.01 Minimum Requirements for Filing an Amendment to Allege Use
The amendment to allege use must include the following minimum elements to be referred to the examining attorney for examination on the merits:
(1) the prescribed fee for at least one class;
(2) one specimen or facsimile of the mark as used in commerce; and
(3) a verification or declaration signed by the applicant stating that the mark is in use in commerce.
An amendment to allege use that omits the allegation of use in commerce, but asserts a verified date of first use in commerce, may be accepted as substantially in compliance with the minimum filing requirement of 37 C.F.R. 2.76(e)(3) for a verified statement that the mark is in use in commerce. Cf. In re Carnicon Development Company, 34 USPQ2d 1541 (Comm'r Pats. 1992); In re Conservation Technology Inc., 25 USPQ2d 1079 (Comm'r Pats. 1992). The examining attorney will require an allegation that the "mark is in use in commerce" during examination.
See TMEP §1104.08 regarding the necessary elements in a complete amendment to allege use.
1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements
The legal instruments examiner ("LIE") in the law office will conduct a preliminary review of an amendment to allege use to determine whether it is timely and complies with the minimum requirements of 37 C.F.R. 2.76(e). If the amendment to allege use is timely and complies with the minimum requirements, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits. See TMEP §§1104.09 et seq. regarding examination by the examining attorney.
See TMEP §1104.01(b) regarding processing an amendment to allege use that does not meet minimum filing requirements, and TMEP §1104.03(c) regarding processing an untimely amendment to allege use.
1104.01(b) Processing an Amendment to Allege Use That Does Not Meet Minimum Filing Requirements
If an amendment to allege use is timely, but does not comply with the minimum requirements of 37 C.F.R. 2.76(e) (see TMEP §1104.01) , the LIE will advise the applicant in writing of the deficiency. The applicant may correct the deficiency, provided the applicant does so before the mark is approved for publication. See 37 C.F.R. 2.76(g). If an acceptable amendment to correct the deficiency is not filed before the mark is approved for publication, the amendment to allege use will not be examined. 37 C.F.R. 2.76(g).
If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, if an electronic funds transfer ("EFT") or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the LIE will advise the applicant that the applicant must repay the fee before the mark is approved for publication, or the amendment to allege use will not be examined. In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 37 C.F.R. 2.6(b)(12). This processing fee must be paid even if the applicant withdraws the amendment to allege use. See TMEP §405.06 regarding payments that are refused.
If the amendment to allege use does not include a specimen, the LIE will advise the applicant that the applicant must submit a specimen, supported by an affidavit or declaration under 37 C.F.R. 2.20 stating that the specimen is in use in commerce on or in connection with the goods/services, before the mark is approved for publication, or the Office will not examine the amendment to allege use.
If the amendment to allege use is not signed, the LIE will advise the applicant that the applicant must submit a properly signed amendment to allege use before the mark is approved for publication, or the Office will not examine the amendment to allege use.
An amendment to allege use that does not meet the minimum filing requirements will remain in the record. If the applicant does not correct all deficiencies before approval of the mark for publication, the examining attorney will not examine the amendment to allege use. In such a case, if the applicant has submitted the fee, the fee will not be refunded and cannot be applied to a later-filed statement of use. If the mark is published for opposition and a notice of allowance issues, the applicant must file a statement of use or request for extension of time to file a statement of use to avoid abandonment of the application.
If the applicant wishes to establish that the amendment to allege use as filed met the minimum requirements of 37 C.F.R. 2.76(e), the applicant must file a petition under 37 C.F.R. 2.146. In addition to the petition fee (37 C.F.R. 2.6), the petition should include a copy of the amendment to allege use and specimen, and any evidence establishing that the amendment to allege use as filed met the minimum filing requirements. See Chapter 1700 for additional information about petitions. If the petition is granted, the amendment to allege use will be considered filed on the date it was originally received in the Office.
See TMEP §1104.03(c) regarding processing an untimely amendment to allege use.
1104.01(c) Processing Defective Amendment to Allege Use Filed With Other Amendments
After the LIE has taken appropriate action on the amendment to allege use (see TMEP §1104.01(b)) , the LIE will process any other amendments filed with the amendment to allege use and will refer the application to the assigned examining attorney for appropriate action on those other amendments.
If the amendment to allege use did not meet the minimum requirements of 37 C.F.R. 2.76(e), the examining attorney will act on any other amendments in the case without considering the amendment to allege use. The examining attorney should issue requirements or refusals according to standard examination procedure without considering the amendment to allege use. Any specimen submitted becomes part of the record and may be relied on in relation to issues unrelated to use.
If the examining attorney determines that the LIE erred in holding that the amendment to allege use did not meet the minimum requirements of 37 C.F.R. 2.76(e), the examining attorney should telephone to advise the applicant that the amendment to allege use will be examined on the merits and to disregard the LIE's action.