T.M.E.P. § 1104.11
Approval of Amendment to Allege Use After Examination

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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1104.11 Approval of Amendment to Allege Use After Examination

The examining attorney should approve the amendment to allege use if it complies with the requirements specified in 37 C.F.R. §§2.76(b) and (c). The amendment to allege use should be approved even if requirements or refusals unrelated to §2.76(b) or (c) are necessary as a result of the examination of the amendment to allege use. Approval of the amendment to allege use does not signify that the application is in condition for approval for publication.

The examining attorney should not approve the amendment to allege use if it does not meet the requirements of 37 C.F.R. §§2.76(b) and (c), e.g., if the applicant has not provided a specimen and fee for each class, or if the goods/services in the amendment to allege use do not conform to the goods/services specified in the application.

On the other hand, if the amendment to allege use meets the requirements of 37 C.F.R. §§2.76(b) and (c), but requirements or refusals related to the ownership of the mark, use of the mark, inconsistencies between the mark in the drawing and the mark on the specimens, or other matters require action, the examining attorney should approve the amendment to allege use and then take action on those other issues. For example, if the specimen shows ornamental use of the proposed mark, the examining attorney should approve the amendment to allege use and issue a refusal based on ornamental use of the proposed mark.

When approving an amendment to allege use, the examining attorney must perform the appropriate TRAM transaction to ensure that a computer-generated notice is issued advising the applicant that the amendment to allege use has been approved and that the application will be published in the same manner as a use-based application. In other words, publication in the Official Gazette will include dates of use and, if the applicant survives the opposition period, the Office will issue a certificate of registration rather than a notice of allowance.