T.M.E.P. § 1107.01
Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is

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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1107.01 Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is Filed

As noted in TMEP §1107 , an applicant may file a petition under 37 C.F.R. §§2.146(a)(3) and (a)(5) to waive 37 C.F.R. 2.77 to permit an examining attorney to examine an amendment during the period between the issuance of a notice of allowance and the filing of a statement of use. In re Upsher-Smith Laboratories, Inc., 45 USPQ2d 1371 (Comm'r Pats. 1997). If such a petition is granted, the examining attorney will either accept or reject the proposed amendment(s) in accordance with the following procedures:

Amendment Accepted/Republication Not Required: If an examining attorney determines that an amendment is acceptable and republication is not required, the examining attorney will call the applicant to notify the applicant of acceptance, and make a note to the file that the proposed amendment has been accepted and that the applicant has been notified of the acceptance. The examining attorney will instruct the LIE to enter the amendment. The application will await the filing of a statement of use or extension request.

Amendment Unacceptable: If an examining attorney determines that an amendment is unacceptable, the examining attorney will call the applicant to notify the applicant that the amendment is not accepted, and make a note to the file that the proposed amendment is unacceptable and that the applicant has been notified of this. The application will await filing of a statement of use or extension request. The applicant must accept the denial, but may again request to amend the application when filing the statement of use.

Amendment Accepted; Republication Required: If an examining attorney determines that the amendment is acceptable, but that republication is required, the examining attorney will call the applicant to ask if the applicant wishes to maintain the request for amendment in light of the fact that republication is required. If the applicant elects to maintain the request, the examining attorney will make a note to the file that the proposed amendment has been accepted, that republication is required, and that the applicant has been advised of this. The examining attorney will have the amendment entered and request the ITU/Divisional Unit to cancel the notice of allowance. The ITU/Divisional Unit will cancel the notice of allowance and the application will be scheduled for republication.

Examiner's Amendment Required; Republication Not Required: If an examining attorney determines that an examiner's amendment is necessary, and republication is not required, the examining attorney will prepare, but not mail, the examiner's amendment. The examiner's amendment will contain a statement that republication is not required. The examining attorney will refer the application to the Photocomposition Coordinator in the Publication and Issue Section for text editing and mailing of the examiner's amendment. The application will await filing of a statement of use.

Examiner's Amendment Required; Republication Required: If an examining attorney determines that an examiner's amendment is necessary, and republication is required, the examining attorney will call the applicant to ask if the applicant wishes to maintain the request for amendment in light of the fact that republication is required. If the applicant elects to maintain the request, the examining attorney will prepare, but not mail, the examiner's amendment. The examiner's amendment will contain a statement that republication is required. The examining attorney will refer the application, with the unmailed examiner's amendment, to the ITU/Divisional Unit for cancellation of the notice of allowance. The ITU/Divisional Unit will cancel the notice of allowance and refer the application to the Photocomposition Coordinator in the Publication and Issue Section for text editing and mailing of the examiner's amendment and processing for republication.

The granting of a petition to examine an amendment between issuance of the notice of allowance and filing of the statement of use does not extend the deadline for filing a statement of use (unless the notice of allowance is cancelled). Where an applicant has not yet received a response to a proposed amendment, the applicant must file its extension request or statement of use. The extension request or statement of use may use alternative language, e.g., refer both to the goods/services identified in the Notice of Allowance, and to a proposed amended identification.