TMEP 1104.01(b): Processing an Amendment to Allege Use that Does Not Meet Minimum Filing Requirements

This is the October 2015 Edition of the TMEP

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1104.01(b)    Processing an Amendment to Allege Use that Does Not Meet Minimum Filing Requirements

If an amendment to allege use is timely, but does not comply with the minimum filing requirements of 37 C.F.R. §2.76(c) (see TMEP §1104.01), the LIE will advise the applicant in writing of the deficiency. The applicant may correct the deficiency, provided the applicant does so before the mark is approved for publication. 37 C.F.R. §2.76(d). If an acceptable amendment to correct the deficiency is not filed before the mark is approved for publication, the amendment to allege use will not be referred to the examining attorney and will not be examined on the merits. Id.

If the filing fee for at least a single class is omitted or is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an electronic funds transfer (“EFT”) or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the LIE will advise the applicant that the applicant must repay the fee before the mark is approved for publication, or the amendment to allege use will not be examined. In addition, when an EFT or credit card is refused or a check is returned unpaid, the applicant must pay the processing fee required by 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.

If the amendment to allege use does not include a specimen, the LIE will advise the applicant that the applicant must submit a specimen, supported by an affidavit or declaration under 37 C.F.R. §2.20 stating that the specimen is in use in commerce on or in connection with the goods/services (or stating that the specimen is in use in commerce in connection with the collective membership organization, for collective membership marks), before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.

If the amendment to allege use is not signed, the LIE will notify the applicant of the deficiency and advise that the applicant must submit a properly signed amendment to allege use before the mark is approved for publication, or the USPTO will not examine the amendment to allege use.

An amendment to allege use that does not meet the minimum filing requirements will remain in the record. If the applicant does not correct all deficiencies before approval of the mark for publication, the examining attorney will not examine the amendment to allege use. In such a case, if the applicant has submitted the fee, the fee will not be refunded and cannot be applied to a later-filed statement of use. If the mark is published for opposition and a notice of allowance issues, the applicant must file a statement of use or request for extension of time to file a statement of use within six months of the date of issuance to avoid abandonment of the application.

If the applicant wishes to establish that the amendment to allege use as filed met the minimum requirements of 37 C.F.R. §2.76(c), the applicant must file a petition under 37 C.F.R. §2.146. In addition to the petition fee (37 C.F.R. §2.6(a)(15)), the petition should include a copy of the amendment to allege use and specimen, and any evidence establishing that the amendment to allege use as filed met the minimum filing requirements. See Chapter 1700 for additional information about petitions. If the petition is granted, the amendment to allege use will be considered filed on the date it was originally received in the USPTO.

See TMEP §1104.03(c) regarding processing an untimely amendment to allege use.