T.M.E.P. § 1109.16
Correcting Defects in Statement of Use

Executive summary:

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1109.16 Correcting Defects in Statement of Use

The applicant must comply with the statutory requirements for filing the statement of use (37 C.F.R. 2.88(b)) before the expiration of the deadline for filing the statement of use (i.e., within six months of the mailing date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). Other defects may be cured after the expiration of the statutory filing period, within the response periods established under standard examination procedure to avoid abandonment of the application. See TMEP §1109.16(a) regarding defects that must be cured before the expiration of the statutory filing period.

1109.16(a) Statutory Requirements That Must Be Met Within Statutory Filing Period

The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. 2.88(b)) before expiration of the period for filing the statement of use (i.e., within six months of the mailing date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). Thus, the following deficiencies must be cured before expiration of the statutory filing period:

(1) Specimens and Dates of Use in Commerce. The applicant must make valid use of the mark in commerce and must, for each class, provide one specimen that was in use before the expiration of the time permitted for filing the statement of use. 37 C.F.R. 2.59(b)(2). If the applicant does not provide an acceptable specimen that was in use in commerce before the expiration of the deadline for filing the statement of use, the examining attorney must refuse registration because the applicant failed to make use within the time permitted, and hold the application abandoned. See TMEP §1109.09(b).

The examining attorney must refuse registration on the same grounds if the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use. 37 C.F.R. 2.71(c)(2); TMEP §1109.09(a).

(2) Filing by Owner. The party filing the statement of use must be the owner of the mark at the time of filing. If the party who filed the statement of use was not the owner at the time of filing the statement of use, the applicant may not provide a substitute statement of use (or the equivalent) in the name of the true owner after the expiration of the deadline for filing the statement of use. In re Colombo, Inc., 33 USPQ2d 1530 (Comm'r Pats. 1994). Therefore, if the party filing the statement of use was not the owner of the mark at the time of filing, and no time remains in the statutory period for filing the statement of use, the examining attorney must refuse registration and hold the application abandoned because the owner failed to file a statement of use within the time permitted. TMEP §1109.10.

(3) Verification. The statement of use must be verified by someone properly authorized to sign on behalf of applicant. If the statement of use is unsigned or signed by the wrong party, a substitute verification must be filed before the expiration of the statutory period for filing the statement of use. 37 C.F.R. 2.88(e)(3). Generally, however, the Office does not question the authority of the person who verifies a statement of use. See TMEP §1109.11(a).

(4) Filing Fee For At Least a Single Class. Payment of the filing fee for at least a single class is a statutory requirement that must be satisfied before the expiration of the statutory period for filing the statement of use. See TMEP §§1109.15 and 1109.15(a).

When refusing registration on the above grounds, the examining attorney should issue a regular Office action with a six-month response clause. See TMEP §1109.16(b).

1109.16(b) Issuance of Examining Attorney's Office Action Holding that a Statement of Use Does Not Meet the Minimum Filing Requirements

When the examining attorney determines that the applicant did not meet the minimum statutory requirements within the period for filing the statement of use, the examining attorney must issue an Office action refusing registration on the ground that the applicant did not file a statement of use that meets the requirements of 15 U.S.C. 1051(d)(1). If there is time remaining in the statutory filing period, the Office action should state that the deficiency must be cured before the expiration of the deadline for filing the statement of use.

If there is no time remaining in the statutory filing period, the examining attorney should issue an Office action with a six-month response clause, stating that the application will be abandoned for failure to timely file a statement of use that meets the requirements of §1(d)(1) of the Act. Even if the statutory filing period has expired, the Office action should include a six-month response clause. This gives the applicant six months to establish that it met the minimum requirements on or before the expiration of the time for filing the statement of use.

If the applicant fails to respond to the Office action, the application will be abandoned for failure to respond. If the applicant responds to the Office action, but does not establish that the requirements for filing a statement of use had been satisfied as of the expiration of the deadline for filing the statement of use, the examining attorney will make the refusal of registration final. If the applicant does not respond, the application will be abandoned for failure to respond to the final refusal.

See TMEP §1109.16(e) regarding the applicant's recourse after an examining attorney's refusal of registration on the ground that the applicant did not comply with the statutory requirements for filing the statement of use within the statutory filing period.

1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements

In limited circumstances, an applicant may file a request for an extension of time to file a statement of use after filing a statement of use, in order to gain more time to comply with the minimum requirements for filing the statement of use (an "insurance" extension request). An applicant may file an extension request after filing a statement of use only if: (1) there is time remaining in the statutory period for filing the statement of use; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. 2.89(e)(1). See TMEP §1108.03 regarding the time periods and requirements for filing an "insurance" extension request, and TMEP §1108.03(a) regarding the procedures for processing such a request.

The filing of such an extension request is not in itself a proper response to an Office action, and does not extend the six-month period for response to the Office action. See TMEP §1109.16(d).

Example: Assume that a notice of allowance issues July 3, 2004; the applicant files a statement of use on July 22, 2004; and the examining attorney issues an Office action requiring substitute specimens on August 6, 2004. The applicant may file its first extension request on or before January 3, 2005, which would give the applicant until July 3, 2004 to make proper use of the mark. However, the applicant must file a response to the Office action on or before February 6, 2005. See TMEP §1109.16(d) for information about responding to an Office action in this situation.

1109.16(d) Response to Office Action Required Within Six Months of Mailing Date Regardless of Expiration Date of Period for Filing the Statement of Use

In limited circumstances, when the applicant files an extension request in conjunction with or after filing a statement of use (see TMEP §1108.03 regarding "insurance" extension requests), the six-month period for response to the examining attorney's Office action will expire before the statutory deadline for filing the statement of use. To avoid abandonment, the applicant must respond to the Office action within six months of the mailing date, regardless of the expiration date of the time for filing the statement of use.

If the time for filing the statement of use expires after the time for responding to an Office action, and the applicant believes that it can cure a deficiency raised in the Office action before expiration of the time for filing the statement of use, the applicant should timely respond to the Office action, stating in the response that it intends to comply with the minimum requirements for filing the statement of use on or before the expiration of the statutory filing period.

If the applicant files such a response, the examining attorney should not suspend the application. Instead, the examining attorney should make final any outstanding refusal or requirement. The applicant will then have six months from the mailing date of the final action to cure statutory deficiencies. Of course, applicant must comply with the minimum requirements for filing the statement of use before the expiration date of the deadline for filing the statement of use.

Example: If the deadline for filing the statement of use expires July 3, 2004, and the examining attorney issues an Office action requiring substitute specimens on March 4, 2004, the applicant has until September 4, 2004, to file the substitute specimens, but the applicant must verify that the specimens were in use in commerce on or before July 3, 2004.

If the applicant files a proper response to the final Office action within six months of the mailing date, and complies with the minimum requirements for filing the statement of use before the expiration of the period for filing the statement of use, the examining attorney will withdraw the refusal based on non-compliance with the statutory requirements for filing the statement of use.

1109.16(e) Applicant's Recourse After Refusal of Registration

If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use, as set forth in 37 C.F.R. 2.88(e) (see TMEP §1109.01) , the applicant may file a petition to revive under 37 C.F.R. 2.66. However, if the applicant met the minimum filing requirements of 37 C.F.R. 2.88(e), but the examining attorney later refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use), the applicant cannot overcome the refusal by filing a petition to revive under 37 C.F.R. 2.66. TMEP §1714.01(f)(ii). The applicant's only recourse is to appeal the examining attorney's refusal of registration to the Trademark Trial and Appeal Board.

See 37 C.F.R. 2.88(b) and TMEP §1109.16(a) regarding the statutory requirements that must be met within the statutory period for filing the statement of use (i.e., within six months of the mailing date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).