TMEP 1104.11: Amendment and Withdrawal of Amendment to Allege Use

This is the October 2015 Edition of the TMEP

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1104.11    Amendment and Withdrawal of Amendment to Allege Use

The applicant may amend the amendment to allege use to correct deficiencies or errors, to overcome a refusal, or to comply with a requirement.

The applicant may withdraw the amendment to allege use at any time before approval of the mark for publication. 37 C.F.R. §2.76(f). The USPTO will not refund the fee for filing an amendment to allege use that is withdrawn (except as provided in TMEP §1104.04). The applicant may authorize the withdrawal via an examiner’s amendment. To process the withdrawal, if the amendment to allege use is timely and meets the minimum filing requirements, it must first be accepted before it may be withdrawn. See TMEP §§1104.01–1104.01(c) regarding minimum filing requirements for amendment to allege use, TMEP §§1104.03–1104.03(c) regarding time for filing an amendment to allege use, and TMEP §1104.09 regarding acceptance of amendment to allege use that meets minimum filing requirements.

The withdrawn amendment to allege use, specimen(s), and any other materials filed with the amendment to allege use will remain part of the record.

If the applicant wishes to request withdrawal of an amendment to allege use during an ex parte appeal, the applicant should direct the request to the Trademark Trial and Appeal Board.

If the applicant withdraws the amendment to allege use, the application will be processed as an intent-to-use application under 15 U.S.C. §1051(b), subject to publication and issuance of a notice of allowance. After the notice of allowance issues, the applicant must file a statement of use under 15 U.S.C. §1051(d). See TMEP §§1109–1109.18 for information on statements of use.

If the amendment to allege use is withdrawn, the examining attorney will withdraw any requirements or refusals specifically related to use of the mark, such as objections related to the form of the verified statement itself, the agreement of the mark as used on the specimens with the mark shown on the drawing, or the use of the applied-for designation evidenced by the specimen. The examining attorney should also withdraw any requirement or refusal related to the execution of the amendment to allege use.

The examining attorney should maintain any requirement or refusal arising from the amendment to allege use not specifically related to the dates of use or use of the mark, such as refusals under 15 U.S.C. §§1052(e)(1), 1052(e)(2), 1052(e)(3), or 1052(e)(4). The amendment to allege use, specimen(s), and any materials submitted with the amendment to allege use may be relied on to support refusals or requirements under these sections. Furthermore, if the amendment to allege use contains an amendment to the identification and the amended identification is acceptable and within the scope of the previous identification, the amended identification remains of record and replaces all previous identifications. TMEP §§1104.10(b)(iii), 1402.07(e).