TMEP 1104.09: Acceptance of Amendment to Allege Use that Meets Minimum Filing Requirements by Examining Attorney

This is the October 2015 Edition of the TMEP

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1104.09    Acceptance of Amendment to Allege Use that Meets Minimum Filing Requirements by Examining Attorney

At the outset, the examining attorney must accept the submission of the amendment to allege use if it is timely filed and meets the minimum filing requirements, unless (1) USPTO records show title in a party other than the party filing the amendment to allege use or (2) the applicant specifies an intention to retain goods/services not yet in use (or an intention to retain the collective membership mark not yet in use) and fails to file a request to divide. See TMEP §§1104.01, 1104.03–1104.03(c), 1104.10(b)(i), 1104.10(b)(ii). Acceptance of the amendment to allege use does not signify that all the requirements of 37 C.F.R. §§2.76(b) for a complete amendment to allege use have been met and the application is in condition for approval for publication.

The examining attorney's acceptance of the amendment to allege use ensures that (1) a computer-generated notice issues advising the applicant that the amendment to allege use has been accepted and forwarded to the examining attorney for substantive review and (2) the basis of the application is changed from §1(b) to §1(a). Thus, even if the amendment to allege use raises issues related to, for example, the dates of use, inconsistencies between the mark on the drawing and the mark on the specimen, ornamentation, or descriptiveness, the examining attorney must accept it before issuing an Office action that addresses the relevant refusals or requirements.

See TMEP §§1104.10–1104.10(b)(vii) regarding examination of an amendment to allege use for compliance with statutory requirements.