T.M.E.P. § 1104.03
Time for Filing Amendment to Allege Use

Executive summary:

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1104.03 Time for Filing Amendment to Allege Use

An applicant may file an amendment to allege use at any time between the application filing date and the date the examining attorney approves the mark for publication. 37 C.F.R. 2.76(a).

An amendment to allege use may be filed after commencement of an ex parte appeal. See TMEP §1104.07.

An applicant may not file either an amendment to allege use or a statement of use between the date the examining attorney approves the mark for publication and the date of issuance of the notice of allowance. This period, during which no allegation of use can be filed, is known as the "blackout period." See TMEP §§1104.03(b) and (c) .

1104.03(a) Use on All Goods Required Before Filing

An applicant may not file an amendment to allege use until the applicant has used the mark in commerce on or in connection with all goods/services for which the applicant seeks registration under §1(b), unless the applicant files a request to divide. 37 C.F.R. 2.76(c). If the applicant files an amendment to allege use before using the mark on or in connection with all the goods/services, but does not file a request to divide, the examining attorney will require the applicant to: (1) withdraw the amendment to allege use (see TMEP §1104.10) ; (2) delete the goods/services not covered by the amendment to allege use from the application; or (3) file a request to divide out the goods/services that are not yet in use. See TMEP §§1110 et seq. regarding requests to divide.

1104.03(b) The "Blackout Period"

Under 37 C.F.R. 2.76(a), an applicant may not file an amendment to allege use under 15 U.S.C. 1051(c) after the date that the application is approved for publication by the examining attorney. Under 37 C.F.R. 2.88(a), an applicant may not file a statement of use under 15 U.S.C. 1051(d) before the issuance of the notice of allowance. These two rules combine to create a period of time when neither an amendment to allege use nor a statement of use can be filed. This period is known as the "blackout period." Any statement of use or amendment to allege use filed during this period will be deemed untimely and the fee will be refunded. In re Sovran Financial Corp., 25 USPQ2d 1537 (Comm'r Pats. 1991). See TMEP §1104.03(c) regarding processing allegations of use filed during the blackout period.

Intent-to-use applicants are encouraged to check the Trademark Applications and Registrations Retrieval ("TARR") database on the Office's website at http://tarr.uspto.gov to determine the status of the application before filing an amendment to allege use.

If the status check indicates that the status of the application is any of the following, then the blackout period is in effect because the mark has been approved for publication and a notice of allowance has not yet issued:

• Approved for Publication (by the examining attorney)

• Publication/Registration review complete (by the law office clerk)

• Published for Opposition

• Notice of Allowance-Withdrawn

• Notice of Allowance-Cancelled

• Withdrawn from publication

• Withdrawn from registration-Jurisdiction restored (to the examining attorney)

• Withdrawn from registration

• Cancelled-Restored to Pendency (indicates subject registration number was issued inadvertently and correction requires restoration of the application to pendency)

• Inadvertently issued registration number-Cancelled (indicates the subject registration number was issued inadvertently and has been cancelled)

• Concurrent use proceeding terminated-granted

• Concurrent use proceeding terminated-denied

• Concurrent use proceeding pending

• Interference proceeding pending

• Interference proceeding terminated

• Opposition pending

• Opposition dismissed

• Opposition dismissed-See TTAB records

• Opposition sustained

• Opposition instituted

• Request for extension of time to file opposition

• Amendment after publication

If the reported status is one of those listed above, then the blackout period has begun and the applicant should not file the amendment to allege use. On the other hand, if the reported status is not one of those listed above, the applicant may file the amendment to allege use.

It is possible that the mark could be approved for publication on the same day but shortly after the applicant checks the status of the application. However, the blackout period does not begin until the day after a mark is approved for publication.

1104.03(c) Processing Amendments to Allege Use Filed During the Blackout Period

If an applicant files an amendment to allege use during the blackout period, the Office will notify the applicant that the amendment to allege use is untimely and will not be processed, and refund the filing fee for the amendment to allege use.

The examining attorney should not cancel the approval or withdraw the application from publication to process the untimely amendment to allege use. Furthermore, the examining attorney should not suspend action in the case or take any other similar action to extend the time for filing an amendment to allege use.

The Office will not retain an untimely amendment to allege use and process it as a statement of use. However, the applicant may resubmit an untimely amendment to allege use as a statement of use after the notice of allowance issues. TMEP §1109.05(a).