TMEP 1109.16(b): Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Statutory Requirements

October 2017 Edition of the TMEP

Previous: §1109.16(a) | Next: §1109.16(c)

1109.16(b)    Issuance of Examining Attorney’s Office Action Holding that a Statement of Use Does Not Meet the Statutory Requirements

When the examining attorney determines that the applicant did not meet the statutory requirements within the period for filing the statement of use, the examining attorney must issue an Office action refusing registration on the ground that the applicant did not file a statement of use that meets the requirements of 15 U.S.C. §1051(d)(1).  If there is time remaining in the statutory filing period, the Office action should state that the deficiency must be cured before the expiration of the deadline for filing the statement of use.

If there is no time remaining in the statutory filing period, the examining attorney must issue an Office action with a six-month response clause, stating that the application will be abandoned for failure to timely file a statement of use that meets the requirements of §1(d)(1) of the Act.  Even though the statutory filing period has expired, the Office action must include a six‑month response clause.  This gives the applicant six months to establish that it met the statutory requirements on or before the expiration of the time for filing the statement of use.

If the applicant fails to respond to the Office action, the application will be abandoned for failure to respond.  If the applicant responds to the Office action, but does not establish that the requirements for filing a statement of use had been satisfied as of the expiration of the deadline for filing the statement of use, the examining attorney will make the refusal of registration final.  If the applicant does not respond, the application will be abandoned for failure to respond to the final refusal.

See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that the applicant did not comply with the statutory requirements for filing the statement of use within the statutory filing period.