T.M.E.P. § 1104.09
Examination of Amendment to Allege Use by Examining Attorney
Executive summary:
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1104.09 Examination of Amendment to Allege Use by Examining Attorney
If a timely filed amendment to allege use meets the minimum requirements of 37 C.F.R. 2.76(e) (see TMEP §1104.01) , the examining attorney will examine the amendment to allege use, in turn, with other amended cases.
The examining attorney must examine the amendment to allege use for compliance with all relevant sections of the Act. The clear-error standard that limits the issues that may be raised in examination of a statement of use (see TMEP §1109.08) does not apply to the examination of an amendment to allege use.
The following sections present examples of issues that should be considered during examination of the amendment to allege use. These sections do not exhaust all possibilities, but rather present a general framework governing the areas for examination.
1104.09(a) 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, can file an amendment to allege use.
If the party filing the amendment to allege use is the owner at the time of filing, but the records of the Office show title in another party, the examining attorney must refuse to approve the amendment to allege use, on the ground that it was not filed by the owner. To overcome the refusal, the applicant may submit evidence to establish chain of title within the response period specified in the examining attorney's Office action. See 37 C.F.R. §§3.71 and 3.73; TMEP §502.01. 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 Services Division, and include a statement that the document has been recorded in the response to the Office action; 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); TMEP §502.01.
If the party filing the amendment to allege use was not the owner of the mark at the time of filing the amendment to allege use, the examining attorney should not approve the amendment to allege use. The true owner may file a substitute amendment to allege use (including a filing fee) on or before the date the application is approved for publication.
See 37 C.F.R. 3.85 and TMEP §502.02(a) regarding the issuance of registration certificate in the name of the new owner, and TMEP §502.02(c) regarding an examining attorney's handling of an application after the mark has been assigned.
1104.09(b) Verification and Date of Execution
The verification should be signed by the applicant or a person properly authorized to sign on behalf of the applicant. 37 C.F.R. 2.76(b)(1). See 37 C.F.R. 2.33(a) and TMEP §804.04 as to who is properly authorized to sign on behalf of an applicant. Generally, the Office will not question the authority of the person who signs a verification unless there is an inconsistency in the record as to the signatory's authority to sign.
If the amendment to allege use is not filed within one year after it is signed, the examining attorney must require a substitute or supplemental verification or declaration under 37 C.F.R. 2.20 stating that the mark is still in use in commerce. 37 C.F.R. 2.76(i); TMEP §804.03.
See TMEP §§301 and 804.05 regarding signature of electronically filed documents.
1104.09(c) Identification of Goods or 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 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 include all the goods/services for which the applicant seeks registration under §1(b). An amendment to allege use cannot be accepted for only some of the goods/services. See TMEP §1104.03(a).
If the applicant has not specified the goods/services in the amendment to allege use, as required by 37 C.F.R. 2.76(b), or if the goods/services specified in the amendment to allege use exceed the scope of the goods/services specified in the application, the examining attorney must require amendment.
If goods/services identified in the application are omitted from the amendment to allege use, but the applicant has not indicated an intention to delete those goods/services from the application, the examining attorney should confirm that the applicant intends to delete the omitted goods/services. Note: If the applicant files the amendment to allege use through TEAS, and fails to identify and pay the fee for an entire class(es), then the examining attorney should consider the goods/services in the omitted class(es) to have been expressly deleted, and should not issue any inquiry with respect to the goods/services in the omitted class(es). The applicant may not reinsert these goods/services.
If the applicant lists all the goods/services identified in the application in the section of a pre-printed amendment to allege use form designated for the identification of goods that are not in use (the effect of which is a representation that the mark was not used in connection with any goods), then the applicant has not expressed an intention to delete these goods/services, and the examining attorney must inquire as to the discrepancy.
The applicant may amend the amendment to allege use to claim use on or in connection with the goods/services that were omitted, provided that (1) the applicant did not expressly delete the goods/services, and (2) the applicant verifies that it has used the mark in commerce on or in connection with the goods/services in an affidavit or declaration under 37 C.F.R. 2.20. Inadvertently omitted goods or services may not be reinserted by examiner's amendment, because verification is required.
Omission of goods/services in an amendment to allege use or statement of use is the only instance when an applicant may reinsert goods or services. Goods or services once expressly deleted, or omitted from the identification of goods/services in a request for an extension of time to file a statement of use, may not be reinserted by later amendment. TMEP §1402.07.
If an amendment of the identification of goods/services results in the addition of class(es) to the application after an amendment to allege use is filed, 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 required by 37 C.F.R. 2.6(a)(1) for adding a class(es) to the application. TMEP §1403.02(c).
1104.09(d) 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 date of the applicant's first use of the mark and first use of the mark in commerce for each class of goods/services. 37 C.F.R. 2.76(b)(1)(ii). The applicant may amend the dates of use if the applicant supports the amendment 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(h).
1104.09(e) Specimen
An amendment to allege use must include a specimen for each class of goods or services. The examining attorney must review the specimen for compliance with all relevant requirements. See TMEP §904.04 regarding material that is appropriate as a trademark specimen, TMEP §§1301.04 et seq. regarding material that is appropriate as a service mark specimen, and TMEP §§1202 et seq. and 1301.02 et seq. regarding use as a mark.
If the applicant submits a substitute specimen in conjunction with an amendment to allege use, the applicant must verify that the applicant used the substitute specimen in commerce on or in connection with the goods/services 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 applicant used the new specimen in commerce on or in connection with the goods/services prior to filing the amendment to allege use. TMEP §904.09.
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. See TMEP §§903.05 and 1104.09(d) regarding amendment of the dates of use.
If the amendment to allege use is filed through TEAS, the specimen must be a digitized image in .jpg format. 37 C.F.R. 2.56(d)(4). See TMEP §904.02(a) for additional information about electronically filed specimens.
1104.09(f) 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 et seq. The same standards that apply to use applications in determining whether specimens support use of the mark and whether amendments to the drawing can be permitted also apply in the examination of an amendment 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, if the amendment of the mark would not be a material alteration of the mark on the original drawing; or (2) submission of a new specimen, if the amendment of the mark would be a material alteration of the mark on the original drawing. 37 C.F.R. 2.72(b)(2). See TMEP §§807.14 et seq. regarding material alteration.
1104.09(g) 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(e)), 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 classes.
If class(es) 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 required by 37 C.F.R. 2.6(a)(1) for adding a class(es) to the application. TMEP §1403.02(c).
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, 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 mark for publication. In addition, when an EFT or credit card is refused, or a check is returned unpaid, the examining attorney must require a $50 processing fee under 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.
1104.09(h) Issuance of Actions by Examining Attorney Related to the Amendment to Allege Use
If the LIE reviews an amendment to allege use and refers it to the examining attorney for examination on the merits, the examining attorney should examine the amendment to allege use.
If the examining attorney determines that the amendment to allege use is not acceptable, or that it raises new issues in the case, the examining attorney will issue an action stating all refusals and requirements arising in the examination of the amendment to allege use and incorporating all unresolved issues from any outstanding Office action in the case. The examining attorney's action related to the amendment to allege use supersedes any outstanding Office action, and the applicant's response on all issues is due six months from the date of the new action. The new action must be nonfinal, because those issues arising from the examination of the amendment to allege use will have been raised for the first time.
If the amendment to allege use was referred for examination before the case was assigned to the examining attorney, the examining attorney will examine the application as a whole, including the amendment to allege use, and will issue a first action addressing all issues in the case.
If the application is suspended, the examining attorney should examine the amendment to allege use. If any action is required, the examining attorney should remove the application from suspension and take appropriate action. Any refusals or requirements that were operative at the time of suspension should be incorporated in the examining attorney's action.
If the amendment to allege use is referred for examination on the merits at the same time as a response, or if it is referred for examination when the application is in the examining attorney's amended docket after receipt of a response, the examining attorney should consider both the response and the amendment to allege use. If the amendment to allege use is acceptable in all respects, the examining attorney should approve the amendment to allege use and take whatever action is necessary on the response. See TMEP §1104.11 regarding approval of the amendment to allege use.
See TMEP §1104.07 regarding amendments to allege use filed with a notice of appeal or after the commencement of an appeal.