1106.01 Issuance of the Notice of Allowance
Section 13(b)(2) of the Trademark Act, 15 U.S.C. §1063(b)(2), provides for issuance of a notice of allowance if a §1(b) application is published for opposition and is not successfully opposed. The notice of allowance in an intent-to-use application will issue about eight weeks after the date the mark was published. The USPTO does not publish any notification in the Official Gazette that a notice of allowance has been issued. The notice of allowance is a key document because its issue date establishes the due date for filing a statement of use. See 37 C.F.R. §2.88(a)(1).
The accuracy of the information stated on the notice of allowance is important. If there are any errors in the notice of allowance, or if the applicant believes that the notice of allowance issued in error (e.g., because an amendment to allege use was previously approved by the USPTO or the filing basis of the application should not be designated as intent-to-use under §1(b)), the applicant should notify the ITU/Divisional Unit immediately, preferably by fax or telephone. See TMEP §1106.04. Telephone and fax numbers may be found on the USPTO website at http://www.uspto.gov.
If an applicant asserts other bases for registration in addition to §1(b), the USPTO will publish the mark for opposition and will issue a notice of allowance if there is no successful opposition. The identification of goods, services, or nature of the collective membership organization specified for all the bases will remain in the application pending the filing and approval of a statement of use for the goods/services/collective membership organization based on §1(b), unless the applicant files a request to divide, a request to delete the §1(b) goods/services/collective membership organization, or a request to delete the §1(b) basis when there is an additional basis for registration. See TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance, TMEP §1107 regarding amendments after notice of allowance, andTMEP §§1110–1110.11(a) regarding requests to divide.
If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned unless, before the expiration of the deadline for filing the statement of use, the applicant files a request to divide, a request to delete the §1(b) goods/services/collective membership organization, or a request to delete the §1(b) basis when there is an additional basis for registration. 37 C.F.R. §2.88(a), (k); TMEP §806.02(d). For example, if all the goods/services are based on both §44(e) and §1(b), the failure to file a timely statement of use or extension request will result in the abandonment of the entire application. In such case, the applicant may file a petition to revive if the delay in filing the statement of use, extension request, or request to delete the §1(b) basis was unintentional. See TMEP §§1714, 1714.01, 1714.01(b)–(g).