TMEP 1109.07: Examination of the Statement of Use — In General

This is the October 2015 Edition of the TMEP

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1109.07    Examination of the Statement of Use — In General

If the statement of use is timely and complies with the minimum filing requirements of 37 C.F.R. §2.88(c), the ITU staff will refer it to the examining attorney for examination on the merits. If available, the same examining attorney who initially examined the application will examine the statement of use. Examination of the statement of use is sometimes referred to as “second examination.”

The examining attorney will review the statement of use to confirm that it meets the requirements of the Act and the rules. See TMEP §1109.06 for the requirements for a complete statement of use.

The examining attorney will examine the specimen to confirm that it shows appropriate use as a mark on or in connection with the goods/services/collective membership organization specified in the statement of use (see TMEP §§1202–1202.17(e)(vi) regarding use of subject matter as a trademark, TMEP§§1301.02–1301.02(f) regarding use of matter as a service mark, and TMEP §1306.04(b)(ii) regarding use of matter as a certification mark). The examining attorney will also determine whether the mark shown on the drawing is a substantially exact representation of the mark as used on the specimen (see TMEP §§807.12(a)–807.12(a)(iii), 1109.12).

If the applicant has complied with the statutory requirements for a statement of use before the expiration of the deadline for filing the statement of use, the applicant may amend or correct the statement of use during examination. See TMEP §1109.16(a)–(d) regarding compliance with statutory requirements before the expiration of the time for filing the statement of use.

If the examining attorney finds the statement of use acceptable, the USPTO will notify the applicant that the statement of use is approved. See TMEP §1109.18 regarding approval of the statement of use. The USPTO will then issue the registration and publish notice of the registration in the Official Gazette. The application is not subject to opposition again.

See TMEP §1109.15 regarding statements of use filed on paper for multiple-class applications and TMEP§§1109.16–1109.16(d) regarding the issuance of Office actions and correction of defects in a statement of use.