EXAMINATION GUIDE 3-89

IMPLEMENTATION OF THE TRADEMARK LAW REVISION ACT OF 1988

AND THE AMENDED RULES OF PRACTICE IN TRADEMARK CASES

Trademark Examining Operation

U.S. Patent and Trademark Office

October 11, 1989 (OG)

[p.1]

Preface

On November 16, 1988, the President signed The Trademark Law Revision Act of 1988

into law, Public Law 100-667, 102 Stat. 3935 (the 1988 amendments). The 1988

amendments, which take effect on November 16, 1989, represent the most significant

reform in United States trademark law since the enactment of The Trademark Act of

1946, 15 U.S.C. Section 1051 et seq. (the Act). The principal purpose of this

examination guide is to provide a comprehensive statement of revisions to Office

policy and procedure associated with the 1988 amendments.

The Rules of Practice in Trademark Cases, 37 C.F.R. Section 2.1 et seq., have also

been revised effective November 16, 1989, principally to incoporate the provisions

of the 1988 amendments. The rules were also revised to update Office policy in other

respects. These additional revisions bring the rules into conformity with current

Office practice in several areas and reflect changes in practice dictated by

decisions such as the Trademark Trial and Appeal Board decision in Crocker National

Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). This guide

will also set forth these additional revisions to Office policy and procedure

reflected in the rules. The revisions discussed here were published in final form on

September 11, 1989, with the exception of the revisions to Trademark Rules 2.42 and

2.186, 37 C.F.R. Sections 2.42 and 2.186, which were published in final form on

August 22, 1989, in conjunction with other revisions related to proceedings before

the Trademark Trial and Appeal Board. All revisions published on both dates take

effect on November 16, 1989. References in this guide to the rules relate to the

rules as amended on November 16, 1989.

The most significant amendment to the Act is a provision permitting the filing of

applications to register marks on the Principal Register based on a bona fide

intention to use a mark in commerce, before actual use (intent-to-use applications).

The examination guide will discuss the administration of this provision in detail.

However, intent to use and other provisions of the 1988 amendments required

revisions in policies and procedures affecting virtually all applications and all

aspects of processing. Please read the entire guide carefully to become familiar

with all of the provisions.

The first major section of the guide presents the requirements, policies and

procedures related to intent-to-use applications. The second major section addresses

provisions affecting all applications. The next two sections address [p.2]

provisions related to other specific types of applications, and the final section

addresses multiple bases and changes in the basis for registration.

The policies set forth in this guide apply to all applications, affidavits and

renewals filed on or after November 16, 1989, unless specifically indicated

otherwise. The stated policies also apply to any action taken on or after November

16, 1989, with respect to applications filed before that date, unless specifically

indicated otherwise. To the extent that the policies and procedures set forth in

this examination guide conflict with policies or procedures set forth in the

Trademark Manual of Examining Procedure (TMEP) or other statements of Office policy,

the provisions of this examination guide are controlling. Note especially the

discussion below concerning the application of the rule restricting amendments to

the identification of goods and services to pending applications.

/s/

James T. Walsh

Administrator for Trademark Policy and Procedure

/s/

David E. Bucher

Director

Trademark Examining Operation

[p.3]Table of Contents

A. Intent-to-Use Applications

1. General Overview

a.Summary of Application Flow

b.Constructive Use Priority

c.Application Requirements

d.Applications Not Accepted Until Effective Date

e.Good Faith

2. Filing-Date Requirements

3. Application Requirements - Initial Examination

a.Drawings

b.Statutory Averments and the Identification of Goods or Services

c.Examination for Use as a Trademark or Service Mark

d.Examination under Sections 1, 2(a), 2(b), 2(c) and 2(e)

e.Examination under Section 2(d)

f.Claims of Acquired Distinctiveness under Section 2(f)

g.Intent-to-Use Applications and the Supplemental Register

4. Amendments to Allege Use under Section 1(c) of the Act

a.Form and Permissible Time Period for Filing an Amendment to Allege Use under

Section 1(c) of the Act

b.Necessary Elements in a Complete Amendment to Allege Use under Section 1(c)

of the Act

c.Minimum Requirements for an Amendment to Allege Use under Section 1(c) of the

Act

d.Examination of the Amendment to Allege Use by the Examining Attorney

i. Ownership and Proper Execution

ii. The Verified Statement and the Identification of Goods and Services

iii. The Specimens

iv. The Drawing

e.Issuance of Actions by the Examining Attorney Related to the Amendment to

Allege Use [p.4]

f.Amendment and Withdrawal of the Amendment to Allege Use

g.Final Acceptance of the Amendment to Allege Use After Examination

5. Publication for Opposition and Issuance of the Notice of Allowance

6. Amendments Between Issuance of the Notice of Allowance and Submission of the

Statement of Use

7. Requests for Extensions of Time to File the Statement of Use

a.Requirements Related to the First Six-Month Extension

b.Requirements Related to Extensions Beyond the First Six-Month Extension -

Good Cause Extensions

c.Identifying the Goods and Services in the Request for an Extension of Time

d.Filing a Request for an Extension of Time in Conjunction with a Statement of

Use

e.Processing of the Request for an Extension of Time

8. Submission of the Statement of Use under Section 1(d) of the Act

a.Form and Permissible Time Period for Filing a Statement of Use under Section

1(d) of the Act

b.Necessary Elements in a Complete Statement of Use under Section 1(d) of the

Act

c.Minimum Requirements for a Statement of Use under Section 1(d) of the Act

9. Examination of the Statement of Use

a.Procedures Governing Examination of the Statement of Use

i. Complying with Minimum Requirements within the Time Permitted

ii. Correcting Defects

iii. Withdrawal of the Statement of Use Prohibited

b.The "Clear-Error" Standard in Examination of the Statement of Use

c.Examination of the Verified Statement of Use

d.The Identification of Goods and Services in the Examination of the Statement

of Use

e.Examination of the Statement of Use Related to the Drawing

f.Consideration of the Specimens of Use in the Examination of the Statement of

Use [p.5]

10. Revival of Abandoned Intent-to-Use Applications

11. Assignment of Intent-to-Use Applications

12. Mailing Procedures and Fees Related to Intent-to-Use Applications

a.Use of the "Box ITU" Designation

b.The Certificate-of-Mailing Procedure

c.Fees Related to Intent-to-Use Applications

Provisions Affecting All Applications

1. Filing-Date Requirements

a.Applicant's Signature

b.Drawing Size

2. Identifying the Applicant and Applicant's Address

3. Drawings

4. Specimens - Requirements

5. Specimens - Examination

6. Identifications of Goods and Services

a.Limiting the Identification of Goods and Services

b.Clarifying the Identification of Goods and Services

7. Claims of Acquired Distinctiveness

8. Supplemental Register

9. Affidavits of Use under Section 8

10. Term and Renewal

11. Assignments

a.Content of Assignment Documents

b.Issuance of Registration in Current Owner's Name

c.Assignment Fees

12. Establishing Ownership of Applications or Ragistrations

13. Revival of Abandoned Applications

14. Concurrent Use [p.6]

15. Requests to Divide an Application

a.Processing Requests to Divide

b.Division of Registration Not Permitted

16. Correspondence with Applicants Not Domiciled in the United States

17. Preferred Size for Application Papers

Provisions Affecting Applications under Section 44 of the Act

1. Filing-Date Requirements

a.Statement of a Bona Fide Intention to Use the Mark In Commerce

b.Priority Claim or Certified Copy of a Foreign Registration

2. Statement of Dates of Use and Method of Use and Specimens Not Required

3. The Basis for Registration in Applications Claiming the Benefits of Section

44(d)

Provisions Affecting Applications Based on Use in Commerce Only

Filing on More Than One Basis and Changing the Basis of the Application [p.7]

A. Intent-to-Use Applications

1. General Overview

a. Summary of Application Flow

The 1988 amendments revise Section 1 of the Act to permit filig of an application

to register a mark on the Principal Register based on a statement of a bona fide

intention to use the mark in commerce. Trademark Act Section 1(b), 15 U.S.C. Section

1051(b). The Act, as amended, further requires that such an applicant use the mark

in commerce before issuance of the registration. The Act thus requires that the

applicant file either an amendment to allege use or a statement of use before, and

as a precondition to, the issuance of the registration. Trademark Act Sections 1(c)

and 1(d), 15 U.S.C. Sections 1051(c) and (d).

The principal difference between the amendment to allege use and the statement of

use is the time of filing. The amendment to allege use may be filed during initial

examination, that is, after filing of the application but before either approval of

the mark for publication or the expiration of the response period after issuance of

a final action. Trademark Rule 2.76(a), 37 C.F.R. Section 2.76(a). If the amendment

to allege use is acceptable and the application is otherwise in condition for

publication, the mark will be published for opposition. After publication, the

application will be processed in the same manner as an application based on use. If

the application is not opposed, or if the applicant prevails in all oppositions

filed, the application will proceed to registration.

If the applicant does not file an acceptable amendment to allege use during

initial examination or if it is withdrawn, and the application is otherwise in

condition for publication, the mark will be published for opposition. If the

application is not opposed, or if the applicant prevails in all oppositions filed,

the Office will issue a notice of allowance under Trademark Act Section 13(b)(2), 15

U.S.C. Section 1063(b)(2). The applicant must file a statement of use within six

months of the issuance of the notice of allowance or within an extension of time

granted for filing of the statement of use. Trademark Act Section 1(d), 15 U.S.C.

Section 1051(d). The applicant may not file the statement of use before issuance of

the notice of allowance. Trademark Rule 2.88(a), 37 C.F.R. Section 2.88(a). This

period after approval for publication and before issuance of the notice of allowance

during which the statement of use may not be filed is referred to [p.8] as the

blackout period. The statement of use will be examined as discussed below.

The applicant may request extensions of time for filing the statement of use under

Trademark Act Section 1(d), 15 U.S.C. Section 1051(d). The applicant may request one

six-month extension without a showing of good cause and four additional six-month

extensions with a showing of good cause. Trademark Rule 2.89, 37 C.F.R. Section 2.89

. Extensions of time are discussed below in detail ( A.7.).

Please note that any reference to "initial examination" refers to examination of

an intent-to-use application before approval for publication. The examination after

filing of the statement of use will be referred to as "examination of the statement

of use." Also, please note that the "notice of allowance" refers to a new document

required under the 1988 amendments.To avoid confusion, the term "allowance" will be

used only in reference to this document and this phase of processing intent-to-use

applications. Therefore, this guide will use the term "approval for publication"

rather than "allowance for publication" to avoid any confusion with the notice of

allowance.

As discussed in more detail below, the examining attorney must raise and dispose

of all possible issues in the application during the initial examination. During

examination of the statement of use, the examining attorney may not issue

requirements or refusals which could or should have been presented in the initial

examination unless the failure to do so initially was a clear error as defined below

( A.9.b.).

The Office has established a special intent-to-use unit (ITU Unit) to process

certain papers. Paralegals in the ITU Unit will review all statements of use to

determine whether they meet the minimum requirements to be forwarded for examination

on the merits, in the same way that the Application Section reviews the initial

application for compliance with filing requirements. If the statement of use meets

the minimum requirements, it will be referred to the examining attorney in the law

office for examination on the merits. The paralegals in the ITU Unit will also

review and act on all requests for extensions of time to file statements of use.

b. Constructive Use Priority

Trademark Act Section 7 has also been amended to provide that the filing at any

application for registration on the Principal Register, including an intent-to-use

application, constitutes constructive use of the mark, provided the application

matures into a registration. Trademark Act Section 7(c), 15 U.S.C. Section 1057(c).

Upon registration, filing thus affords the applicant nationwide priority over others

except parties who had [p.9] used the mark before the applicant's filing date,

parties who had filed in the Office before the applicant or parties who are entitled

to an earlier priority filing date based on the filing of a foreign application

under Trademark Act Section 44(d), 15 U.S.C. Section 1126(d).

The Office will not amend the filing date of any application filed before November

16, 1989, to a date on or after November 16, 1989, for the purpose of affording the

applicant whatever benefit the constructive use date may provide.

c. Application Requirements

Intent-to-use applications must comply with all of the requirements of the Act and

relevant regulations in all respects except as specifically noted in this guide. For

example, the provisions of Sections 2(e)(1), 2(e)(2) and 2(e)(3) apply to

intent-to-use applications as well as to other applications. This section of the

guide will focus on those requirements, policies and procedures related to

intent-to-use applications which differ from those related to the filing and

processing of other applications.

d. Applications Not Accepted Until Effective Date

The Office will not accept any intent-to-use applications filed before Novemer 16,

1989. If any such application is received before that date, the Office will return

the application. If an intent-to-use application filed before the effective date

reaches the examining attorney in error, the examining attorney should return the

case to the Application Section for appropriate action. However, if the examining

attorney has already issued an action, the examining attorney should issue a new

action refusing registration because the application was void as filed.

Intent-to-use applications executed before the effective date, but filed on or

before the effective date, will be accepted. However, the examining attorney will

determine whether the time between execution and filing is within Office guidelines

for all applications. See TMEP section 803.04. The applicant may re- execute the

declaration verifying its statement of a bona fide intention to use the mark in

commerce if the examining attorney determinesthat the delay between execution and

filing was unreasonable.

All intent-to-use and Section 44 applicants must file the application within a

reasonable time after execution to ensure the statement of intent is valid at the

time of filing. The guidelines governing the reasonableness of the lapse of time are

the same as those which apply to use applicants. [p.10]

e. Good Faith

The Act specifies that an applicant may file an application based on a bona fide

intention to use a mark in commerce "...under circumstances showing the good faith

of such person." Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). The Office

will not evaluate the good faith of an applicant in the ex parte examination of

applications. The applicant's sworn statement of a bona fide intention to use the

mark in commerce will always be sufficient evidence of good faith in the ex parte

context. Consideration of issues related to good faith is appropriate in an inter

partes proceeding.

2. Filing-Date Requirements

Trademark Rule 2.21, 37 C.F.R. Section 2.21, sets forth the minimum requirements

for receiving a filing date for an intent-to-use application as well as other types

of applications. These minimum formal requirements do not include all of the

requirements which may ultimately apply for registration of the mark, but merely

those requirements which must be met to receive a filing date. Please note the

discussion below of those requirements for receiving a filing date which apply to

all applications, in particular, the requirement that the application include a

declaration or verification signed by the applicant to receive a filing date (

B.1.).

With specific reference to intent-to-use applications, the application must

include the following elements to receive a filing date: the name of the applicant;

the name and address to which communications can be directed; a drawing of the mark

substantially meeting all of the requirements of Trademark Rule 2.52, 37 C.F.R.

Section 5.52; an identification of goods or services; a claim of a bona fide

intention to use the mark in commerce; a verification or declaration under Trademark

Rule 2.33(b), 37 C.F.R. Section 2.33(b), signed by the applicant; and the required

filing fee for at least one class of goods or services.

In the case of an intent-to-use application, as in the case of all applications,

if the application lacks any of the elements specified as necessary to receive a

filing date, the application will be denied a filing date and all papers returned to

the applicant with an explanation as to the deficiency. TMEP section 704. If an

application which lacks one or more of the elements required for receiving a filing

date is referred to the law office for examination in error, the examining attorney

should return the case to the Application Section for appropriate handling. If the

examining attorney discovers that an element was lacking after taking an action in

the case, the examining attorney should issue a refusal on the ground that the

application was not eligible to receive a filing date. TMEP section 705.02. [p.11]

The fee for filing an intent-to-use application is the same as the filing fee for

any other application, $175.00 per class.

3. Application Requirements - Initial Examination

In an intent-to-use application, the examining attorney will potentially examine

both the application and a statement of use. After receipt of the application, the

Office will perform the initial examination of the application to determine whether

the mark is eligible for registration, but for the lack of use. If it is found to be

eligible, the mark will be approved for publication and published for opposition. If

the applicant has not submitted an amendment to allege use before publication, and

the application is not opposed or survives all oppositions filed, the Office will

issue a notice of allowance. Trademark Act Section 13(b), 15 U.S.C. Section 1063(b);

Trademark Rule 2.81, 37 C.F.R. Section 2.81. In such a case, the applicant must

submit a statement of use. Trademark Act Section 1(d)(1), 15 U.S.C. Section

1051(d)(1); Trademark Rule 2.88, 37 C.F.R. Section 2.88. If an amendment to allege

use is filed and accepted, the application will be processed in the same manner as a

use application from that point forward.

This section addresses examination before publication only; a later section will

discuss the filing and examination of the statement of use after issuance of the

notice of allowance.

The examining attorney must examine and act on all possible issues in the initial

examination of the application. The intent-to-use application is subject to the same

requirements and examination procedures as all other applications, except as

specifically noted.

a. Drawings

The examination of the drawing in initial examination, before submission of any

amendment to allege use and specimens, will focus primarily on the form of the

drawing and compliance with Trademark Rule 2.52, 37 C.F.R. Section 2.52. The

examination of the drawing after submission of an amendment to allege use is

discussed below ( A.4.d.iv.). As in any other application, the applicant may not

amend the mark in a drawing if the amendment constitutes a material alteration of

the mark. In re The Wine Society of America, Inc., Serial No. 662,515 (TTAB, April

6, 1989). The applicant may not add or delete matter if the amendment would alter

the character of the mark.

Please note the discussion below concerning the requirement in all applications

that special-form drawings not exceed four inches by four inches to receive a filing

date ( B.1.b.). [p.12]

b. Statutory Averments and the Identification of Goods and Services

The application must include a statement that the applicant has a bona fide

intention to use the mark in commerce with respect to specific goods and services as

well as the other averments specified in Trademark Act Section 1(b), 15 U.S.C.

Section 1051(b). Trademark Rule 2.33(b)(2), 37 C.F.R. Section 2.33(b)(2). If the

application does not include the averments, the examining attorney must require a

new verification including all necessary averments.

The general requirements related to identification of goods and services discussed

below apply to intent-to-use applications as well as to all other applications.

Under Trademark Rule 2.71(b), 37 C.F.R. Section 2.71(b), "the identification of

goods or services may be amended to clarify or limit the identification, but

additions will not be permitted." The policies governing the application of this

revised rule are discussed in detail below ( B.6.) with examples and merit special

attention.

Furthermore, under long-standing Office policy, the identification of goods and

services must be specific and definite. Cf. In re Societe General des Eaux

Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824

F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987).

As noted above, the Office will not examine the applicant's good faith in relation

to the identification of goods or services or otherwise. Consideration of this issue

is more appropriate in an inter partes proceeding.

In suggesting identifications, examining attorneys should not be overly

restrictive. See In re Sentry Chemical Company, 230 USPQ 556 (TTAB 1986).

Because applicants may only limit or clarify the goods and services, the examining

attorney should provide appropriate cautions to the applicant in requiring amendment

to the identification of goods and services. When appropriate, the examining

attorney should advise the applicant that goods or services explicitly deleted by

amendment may not be reinserted at a later point in prosecution. Examining attorneys

should take particular attention in the case of pro se applicants to ensure that

they are aware of the restrictions related to amendments to the identification of

goods and services.

c. Examination for Use as a Trademark or Service Mark

The Office will not examine the issue of use as a trademark or service mark in the

initial examination of an intent-to-use application unless the applicant has

submitted specimens of use in conjunction with an amendment to allege use under

Section 1(c). However, as noted below ( A.4.d.), if the applicant withdraws an

[p.13] amendment to allege use, the specimens remain of record, but the examining

attorney may not consider or act on any such specimens in relation to the issue of

use.

d. Examination under Sections 1, 2(a), 2(b), 2(c) and 2(e)

To the fullest extent possible, the examining attorney will examine the

intent-to-use application for registrability under Trademark Act Sections 1, 2(a),

2(b), 2(c) and 2(e), 15 U.S.C. Sections 1051, 1052(a), (b), (c) and (e), according

to the same procedures and standards which apply to any other application. The

examining attorney should investigate all possible issues regarding registrability

under these sections through all available sources. If appropriate, the examining

attorney should request that the applicant provide literature or explanation

concerning these issues under Trademark Rule 2.61(b), 37 C.F.R. Section 2.61(b). The

examining attorney should request such information relevant to the types of goods or

services or the trade, in general, or similar general information. The examining

attorney should not request information regarding use of the specific mark in

relation to the goods or services.

First and foremost, the examining attorney must develop evidence during the

initial examination from sources other than the applicant. The examining attorney

may not make any inquiry or request any information premised on use of the mark

before the applicant files an amendment to allege use. If the applicant submits an

amendment to allege use during the initial examination, the examining attorney may

then obtain relevant information from the applicant in the same manner as would

apply in any application based on use unless the amendment to allege use is

withdrawn.

The examining attorney must raise all possible issues under these sections in the

initial examination of the application. As discussed more fully below ( A.9.),

Office policy precludes the issuance of a requirement or refusal during examination

of the statement of use if the issue could or should have been treated in the

initial examination, unless the failure to do so in initial examination constitutes

a clear error. "Clear error" means an error which, if not corrected, would result

in issuance of a registration in violation of the Act. The meaning and application

of this standard are discussed in detail below ( A.9.b.).

e. Examination under Section 2(d)

The examining attorney will perform a search and will issue refusals, as

appropriate, under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), in the

case of an intent-to-use application. The determination of likelihood of confusion

under Section 2(d) in an intent-to-use application does not differ from the

determination in any other type of application. The examining attorney should

consider questions concerning the scope of the goods and services and related goods

and services in determining likelihood of confusion under the standards which have

[p.14] historically governed in applications based on use or based on a foreign

application or registration.

For the purpose of determining priority among pending applications, the

intent-to-use application will be treated in the same manner as any other

application. For purposes of publication for opposition, an intent-to-use

application will receive priority over any application which has an effective filing

date later than the intent- to-use application.

For the purpose of determining priority between two applications which have the

same filing date, the application with the earlier date or execution will be

accorded priority for purposes or publication for opposition. Trademark Rule

2.83(b), 37 C.F.R. Section 2.83(b). This would apply whether one or both of the

applications are intent-to-use applications.

Also, an intent-to-use application, like any other application, cannot serve as

the basis for a formal refusal under Section 2(d) until the application has matured

into a registration.

f. Claims of Acquired Distinctiveness under Section 2(f)

An intent-to-use applicant may not assert that a nondistinctive designation has

acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. Section 1052(f)

, until the applicant has submitted an amendment to allege use or a statement of

use. A claim of acquired distinctiveness, by definition, requires prior use. Section

2(f) is limited by its terms to "a mark used by the applicant." Therefore, the

examining attorney should reject any claim of acquired distinctiveness filed before

submission of an acceptable amendment to allege use or statement of use. The

examining attorney should consider and act on any claim of acquired distinctiveness

filed after such time in the same manner and according to the same standards which

would apply to any other application.

Please note the discussion below of the revision regarding five- year claims of

acquired distinctiveness ( B.7.).

g. Intent-to-Use Applications and the Supplemental Register

An intent-to-use applicant may not seek registration on the Supplemental Register

until the applicant has submitted either an acceptable amendment to allege use or

statement of use. Trademark Rule 2.75(b), 37 C.F.R. Section 2.75(b). Only

applications under Trademark Act Section 44, 15 U.S.C. Section 1126, are excepted

from the use requirement in seeking registration on the Supplemental Register.

Trademark Act Section 44(e), 15 U.S.C. Section 1126(e).

If an applicant submits an application for the Supplemental Register based on

intent to use, the Office will reject the application because it was void as filed

and will return all [p.15] papers to the applicant with any fees submitted. If any

such application reaches an examining attorney in error, the examining attorney

should return the papers to the Application Section for appropriate action.

If an intent-to-use applicant does file an acceptable amendment to allege use or

statement of use and an acceptable amendment to the Supplemental Register, the

Office will change the effective filing date of application to the date of the

filing of the amendment to allege use or the statement of use. Trademark Rule

2.75(b), 37 C.F.R Section 2.75(b). The examining attorney must ensure that the

effective filing date has been changed.

The amendment to allege use or statement of use should be examined before any

action is taken on an amendment to the Supplemental Register.

4. Amendments to Allege Use under Section 1(c) of the Act

As stated earlier, an intent-to-use applicant must file either an amendment to

allege use under Trademark Act Section 1(c), 15 U.S.C. 1051(c), or a statement of

use under Trademark Act Section 1(d), 15 U.S.C. Section 1051(d), as a precondition

to issuance of the registration. This section will discuss amendments to allege use

only; the statement of use will bediscussed below ( A.8.and 9.).

a. Form and Permissible Time Period for Filing an Amendment to Allege Use

under Section 1(c) of the Act

Any paper which includes an amendment to allege use under Section 1(c) of the Act

should be entitled "Amendment to Allege Use" whether or not it includes other

amendments. This title should appear at the top of the first page. Trademark Rule

2.76(d), 37 C.F.R. Section 2.76(d). This practice is recommended, not required. It

will assist in the prompt and orderly processing of papers. The Office will not take

any action to require a proper title.

An applicant may file an amendment to allege use under Section 1(c) of the Act at

any time after filing the application and before the date the examining attorney

approves the mark for publication or before the expiration of the six- month

response period after issuance of a final action. Trademark Rule 2.76(a), 37 C.F.R.

Section 2.76(a). If the applicant files an amendment to allege use after the time

indicated, and before the permissible period for filing a statement of use, the

review and amendment clerk will return the amendment to allege use and any fees to

the applicant. The applicant may resubmit the amendment to allege use as a statement

of use after issuance of the notice of allowance.

If the applicant submits a late amendment to allege use on the same paper with

other amendments, the review and amendment clerk will retain the papers for

appropriate processing of the [p.16] other amendments and will advise the applicant

that the amendment to allege use is late and must be resubmitted as a statement of

use after issuance of the notice of allowance. The review and amendment clerk will

arrange a refund of any fees in conjunction with this notification.

If the amendment to allege use is filed within the time permitted and complies

with the minimum requirements to be referred for examination on the merits, but the

application was approved for publication before the amendment to allege use was

associated with the file, the examining attorney should withdraw the application

from publication and examine the amendment to allege use.

If the applicant files the amendment to allege use in conjunction with a notice of

appeal, the Trademark Trial and Appeal Board will institute the appeal, suspend

action on the appeal and remand the case to the examining attorney to examine the

amendment to allege use. The examining attorney should continue examination

according to standard examining procedures until final resolution of all new issues

arising in the examination of the amendment to allege use.

If the application becomes abandoned in the course of the examination of the

amendment to allege use, the examining attorney will advise the Trademark Trial and

Appeal Board. If the application is not abandoned in the course of the examination

of the amendment to allege use, that is all issues are resolved or made the subject

of a final action, the examining attorney should return the application to the

Trademark Trial and Appeal Board for resumption of the appeal or other action, as

appropriate. Trademark Rule 2.142(f)(3), 37 C.F.R. Section 2.142(f)(3).

The Office will not accept an amendment to allege use during the pendency of an ex

parte appeal unless the amendment to allege use was filed within the six- month

response period after issuance of the final action from which the appeal was taken.

The applicant may file the amendment to allege use only after the applicant has

made use of the mark on or in connection with all goods or services for which the

applicant will ultimately seek registration in the application, unless the applicant

specifically requests that the application be divided. Trademark Rule 2.76(c), 37

C.F.R. Section 2.76(c). Trademark Rule 2.87, 37 C.F.R. Section 2.87, permits an

applicant to divide the application into two or more separate applications. While an

applicant can request division for any reason, the purpose of dividing the

application in this case would be to effect publication or issuance of a

registration for goods or services on or in connection with which the applicant had

already made use while maintaining an active application for the remaining goods or

services. The requirements attendant to submission of a request to divide an

application are discussed more fully below ( B.15.). [p.17]

The filing of an amendment to allege use does not relieve the applicant of the

duty to file a response to an outstanding Office action or to take any other action

required in the case, including the filing of a notice of appeal. As noted, in the

case of an appeal, the Trademark Trial and Appeal Board will remand the case for

examination of the amendment to allege use.

b. Necessary Elements in a Complete Amendment to Allege Use under Section

1(c) of the Act

The amendment to allege use must include the following elements:

i. a verified statement that the applicant is believed to be the owner of the mark

and that the mark is in use in commerce, specifying the date of the applicant's

first use of the mark and first use of the mark in commerce, the type of commerce,

those goods or services specified in the application on or in connection with which

the mark is in use in commerce and the mode or manner in which the mark is used;

ii. three specimens or facsimiles of the mark as used in commerce conforming to

the requirements of Trademark Rules 2.56, 2.57 and 2.58, 37 C.F.R. Sections 2.56,

2.57 and 2.58; and

iii. the prescribed fee.

Trademark Rule 2.76(b), 37 C.F.R. Section 2.76(b).

The fee for filing an amendment to allege use is $100.00 per class.

c. Mininum Requirements for an Amendment to Allege Use under Section 1(c) of

the Act

The amendment to allege use must include the following minimum elements to be

referred to the examining attorney for examination on the merits:

i. the prescribed fee;

ii. at least one specimen or facsimile of the mark as used in commerce; and

iii. a verification or declaration signed by the applicant stating that the mark

is in use in commerce.

Trademark Rule 2.76(e), 37 C.F.R. Section 2.76(e).

The review and amendment clerk will conduct a preliminary review of the amendment

to allege use to determine whether it is timely and complies with the minimum

requirements. This preliminary review is similar to the review in the Application

Section for filing-date requirements in a new application. If the [p.18] amendment

to allege use is timely and does comply with those requirements, the review and

amendment clerk will refer the application to the responsible examining attorney for

examination of the amendment to allege use on the merits.

If the amendment to allege use is untimely, the review and amendment clerk will

return it to the applicant. If the applicant has submitted other amendments on the

same paper with an untimely amendment to allege use, the review and amendment clerk

will notify the applicant that the amendment to allege use is untimely and will not

be considered and will process the other amendments, as appropriate, without

consideration of the amendment to allege use. If a fee has been submitted, the

review and amendment clerk will process the refund of the fee. The applicant may

resubmit the amendment to allege use as a statement of use after issuance of the

notice of allowance. Trademark Rule 2.76(f), 37 C.F.R. Section 2.76(f).

If the amendment to allege use is timely, but does not comply with the minimum

requirements specified above, the review and amendment clerk will advise the

applicant of the deficiency. The applicant may correct the deficiencies, provided

the applicant does so before the mark has been approved for publication or the

expiration of the response period after issuance of a final refusal. Trademark Rule

2.76(a), 37 C.F.R. Section 2.76(a). The review and amendment clerk should place the

informal amendment to allege use in the file with copies of the relevant action

advising the applicant of the deficiencies. If the applicant does not correct the

deficiencies before approval of the mark for publication or before the expiration of

the response period for a final refusal, the amendment to allege use will not be

examined. In such a case, if the applicant has submitted the fee, the fee will not

be refunded. If the mark is published for opposition, the applicant may file a

statement of use after issuance of the notice of allowance.

If the amendment to allege use is not signed, the review and amendment clerk will

hold it not in compliance with the minimum requirements and will require that the

applicant submit a properly signed amendment to allege use. The review and amendment

clerk will not inquire into the authority of the person who signed. The examining

attorney will examine this issue if and when the amendment to allege use is referred

for examination on the merits.

After the review and amendment clerk has taken appropriate action with respect to

any deficient amendment to allege use, the review and amendment clerk will process

any other amendments filed with the amendment to allege use and will refer the case

to the responsible examining attorney for appropriate action on those other

amendments.

As noted previously, the filing of an amendment to allege use does not constitute

a response to any outstanding Office action in the case. The applicant must respond

to any such action within [p.19] the time provided to avoid and abandonment of the

application. Trademark Rule 2.76(g), 37 C.F.R. Section 2.76(g).

If the review and amendment clerk has issue an action holding the proposed

amendment to allege use not in compliance with the minimum requirements, the

examining attorney will act on any other amendments in the case without

consideration of the amendment to allege use. The examining attorney should issue

requirements or refusals in nonfinal or final form according to standard examination

procedure without consideration of the amendment to allege use. Any specimens

submitted, as in the case of specimens related to an amendment to allege use which

is withdrawn, become part of the record and may be relied on in relation to issues

unrelated to use.

If the examining attorney determines that the review and amendment clerk erred in

holding that the amendment to allege use did not meet the minimum requirements to be

referred for examination on the merits, the examining attorney should telephone to

advise the applicant that the amendment to allege use will be examined on the merits

and to disregard the review and amendment clerk's action citing deficiencies.

d. Examination of the Amendment to Allege Use by the Examining Attorney

The examining attorney must examine the amendment to allege use for compliance

with all relevant sections of the Act. If the examination of the amendment to allege

use raises any issues necessitating the issuance of requirements or refusals, the

examining attorney must take appropriate action, as discussed below. The following

sections present examples of issues which should be examined in relation to the

amendment to allege use. These sections do not exhaust all possibilities, but

present a general framework governing the areas for examination.

i. Ownership and Proper Execution

The examining attorney must confirm that the proper party has executed the

amendment to allege use. The party submitting the amendment to allege use must be

the same as the applicant or a valid assignee under Trademark Act Section 10, 15

U.S.C. Section 1060.

The person who executes the amendment to allege use must be entitled to do so on

behalf of the applicant. The same persons identified as possessing the authority to

sign the original application under Trademark Act Section 1, 15 U.S.C. Section 1051,

are the only persons possessing the authority to sign the amendment to allege use.

That is, only the individual owner can sign for an individual applicant, only a

general partner can sign for a partnership and only an officer can sign for a

corporation or association. If the amendment to allege use is not signed by one of

[p.20]these persons, the examining attorney must require that the applicant submit a

substitute amendment to allege use signed by a proper person, or that a proper

person execute an affidavit or declaration verifying the facts as set forth in the

amendment to allege use.

The color of authority provision of Trademark Rule 2.71(c), 37 C.F.R. Section

2.71(c), does apply to amendments to allege use. However, the applicant need not

demonstrate that the person who signed originally had color of authority because the

applicant may submit a substitute declaration within the response period set in the

examining attorney's action, whether or not the person who signed originally had

color of authority. The specific date on which the applicant submits the amendment

to allege use does not have the same importance as the filing date for the

application or the statement of use, since the amendment to allege use can be

submitted up to the expiration of the six-month response period following a final

action, including a final action requiring execution by a proper person.

ii. The Verified Statement and the Identification of Goods and Services

The examining attorney must examine the verified statement to ensure that the

statement includes the necessary averments, that the dates are properly stated, that

the type of commerce is indicated and that the mode of use is set forth. If the

statement is defective, the examining attorney must require appropriate amendment.

The examining attorney must also examine the identification of goods and services

to ensure that it conforms to the goods and services specified in the application.

The applicant may limit or clarify the goods and services, but the applicant cannot

add to or otherwise expand the identification of goods or services specified in the

application.

If goods or services identified in the application are omitted from the amendment

to allege use, but the applicant has not specifically indicated an intention to

delete those goods or services from the application, the examining attorney should

confirm that the applicant intends to delete the omitted goods or services. The

applicant may amend the application to reinsert goods or services which have been

omitted from the amendment to allege use, provided the applicant did not expressly

delete the goods or services by amendment and provided the applicant verifies that

it has used the mark in commerce on or in connection with the goods or services in

an affidavit or declaration under Trademark Rule 2.20, 37 C.F.R. Section 2.20.

Omission of goods or services in an amendment to allege use or statement of use is

the only instance in which an applicant may reinsert goods or services. The general

rule is that goods and services once deleted by express amendment or omitted from

the identification of goods and [p.21] services in a request for an extension of

time to file a statement of use may not be reinserted in a later amendment.

iii. The Specimens

The examining attorney must review the specimens for compliance with all relevant

requirements. The examining attorney must confirm that the designation is used as a

mark on the specimens. The examining attorney must determine whether the specimens

indicate descriptive or generic use of the mark. The examining attorney must examine

the specimens to determine whether any issue concerning ownership of the mark is

presented.

The clear-error standard which limits the issues that may be raised in examination

of the statement of use does not apply to the examination of the amendment to allege

use. However, the examining attorney must raise all possible issues, such as

descriptiveness issues, in the initial examination without regard to whether the

applicant will file an amendment to allege use or a statement of use. The applicant

may do either, and the examining attorney may be precluded from raising an issue

under the clear-error standard if the applicant files a statement of use.

If the applicant submits substitute specimens in conjunction with an amendment to

allege use, the applicant need not verify that the substitute specimens were in use

as of any specific date, but merely that the substitute specimens were used in

commerce in connection with the goods or services.

iv. The Drawing

Trademark Rule 2.51, 37 C.F.R. Section 2.51, specifies that the drawing in an

intent-to-use application must be a substantially exact representation of the mark

as intended to be used and as actually used upon filing of the amendment to allege

use before publication or the statement of use after issuance of the notice of

allowance. Trademark Rule 2.88(j), 37 C.F.R. Section 2.88(j). An applicant may not

amend the mark in a drawing if the amendment constitutes a material alteration of

the mark. Also, the mark in the drawing must agree with the mark as used on the

specimens. The same standards which apply to use applications in determining whether

specimens support use of the mark and in determining whether amendments can be

permitted apply in the examination of the amendment to allege use.

Therefore, in an intent-to-use application, the examining attorney must require

amendment to the mark or the submission of new specimens if the mark in the drawing

is not a substantially exact representation of the mark as used on the specimens.

Trademark Rule 2.72(c), 37 C.F.R. Section 2.72(c). However, if amendment of the mark

would constitute a material alteration of the mark, the examining attorney must

require substitute specimens only. The same standards applied in use applications in

determining whether the specimens support use of the applied-for [p.22] mark apply

to specimens in intent-to-use applications. See Examination Guide 2-89. Cf. United

Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481 (TTAB 1988).

e. Issuance of Actions by the Examining Attorney Related to the Amendment to

Allege Use

If, upon examination, the examining attorney determines that the amendment to

allege use is not acceptable, or that it raises new issues in the case, the

examining attorney will issue an action stating all refusals and requirements

arising in the examination of the amendment to allege use and incorporating all

unresolved issues from any outstanding Office action in the case. The action related

to the amendment to allege use thus supersedes any outstanding Office action, and

the applicant's response on all issues is due six months from the date of the new

action. The new action will be a nonfinal action since at least those issues arising

from the examination of the amendment to allege use will have been raised for the

first time.

If the amendment to allege use is received before any examination of the

application, the review and amendment clerk will review the amendment to allege use

to determine whether it complies with the minimum requirements and will take

appropriate action. The review and amendment clerk will return the case to the new

case docket after taking appropriate action. When the case is reached for

examination, the examining attorney will examine the application as a whole,

including the amendment to allege use, and will issue a first action addressing all

issues in the case.

If the review and amendment clerk reviews the amendment to allege use and refers

it to the examining attorney for examination on the merits, the examining attorney

should examine the amendment to allege use regardless of the status of the

application. If the application is in suspended status, the examining attorney

should examine the amendment to allege use, and if any action is required, the

examining attorney should remove the application from suspension and take

appropriate action.

If the amendment to allege use is submitted at the same time as a response and it

is referred for examination on the merits, the examining attorney should consider

both the response and the amendment to allege use. If the examining attorney must

take any action with respect to the amendment to allege use, the examining attorney

should issue a nonfinal action incorporating any refusals or requirements which

remain outstanding after the applicant's response. If the amendment to allege use is

acceptable in all respects, the examining attorney should act on the response

independent of the amendment to allege use. The examining attorney should proceed in

the same manner if the amendment to allege use reaches the examining attorney when

the case is in the examining attorney's amended docket after receipt of a

response.[p.23]

f. Amendment and Withdrawal of the Amendment to Allege Use

The applicant may amend the amendment to allege use to correct deficiencies, to

overcome a refusal, to comply with a requirement or for any other purpose. Cf.

Trademark Act Section 1(d)(3), 15 U.S.C. Section 1051(d)(3).

The applicant may withdraw amendment to allege use. The applicant or the

applicant's attorney may authorize withdrawal in an examiner's amendment. The

applicant may do so at any time after submission of the amendment to allege use and

before approval of the application for publication. The Office will not refund the

fee for filing the amendment to allege use if it is withdrawn by the applicant.

If the applicant withdraws the amendment to allege use, the application will be

processed as an intent-to-use application subject to publication, issuance of a

notice of allowance and submission of a statement of use after issuance of the

notice of allowance.

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 for a determination by the Board on the request.

If the applicant withdraws the amendment to allege use, 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, objections

related to the agreement of the mark as used with the drawing or objections related

to use of the applied-for designation as a trademark or service mark on the

specimens. 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 ownership

questions or refusals or requirements related to Sections 2(e)(1), 2(e)(2) or

2(e)(3) of the Act. The specimens or any other submission related to the amendment

to allege use will remain part of the record for the purpose of determinations under

these sections. Issues related to use include functionality, ornamentation and

configuration issues.

If the applicant withdraws the amendment to allege use after issuance of the

notice of final acceptance of the amendment to allege use, the examining attorney

must withdraw the acceptance on the TRAM system.[p.24]

g. Final Acceptance of the Amendment to Allege Use After Examination

If the amendment to allege use is acceptable in all respects, the Office will

notify the applicant of its acceptance. The examining attorney will ensure that the

computer-generated notice is issued. The examining attorney must also sign the file

to indicate acceptance of the amendment to allege use. As noted above, after an

amendment to allege use is accepted, the intent-to-use application will be processed

in the same manner as a use application under Trademark Act Section 1(a), 15 U.S.C.

Section 1051(a). The notification must be sent regardless of the status of the case,

whether there is an outstanding Office action or not. Examination should continue on

other issues in the case after the acceptance of the amendment to allege use.

5. Publication for Opposition and Issuance of the Notice of Allowance

In the case of an intent-to-use application, if the examining attorney determines

that the mark is entitled to registration, but for the submission of a statement of

use, that is, no amendment to allege use has been accepted, the examining attorney

will approve the mark for publication and the mark will be published for opposition.

In the case of an intent-to-use application where an amendment to allege use has

been submitted and accepted, the application will be processed thereafter in the

same manner as a use application. If the application is not opposed or survives all

oppositions filed, the mark will proceed to registration.

In the case of an intent-to-use application where no amendment to allege use has

been filed or where the applicant has withdrawn the amendment to allege use, the

Office will issue a notice of allowance, provided the mark clears the opposition

period or survives all oppositions. Trademark Act Section 13(b)(2), 15 U.S.C.

Section 1063(b)(2); Trademark Rule 2.81(b), 37 C.F.R. Section 2.81(b).

The notice of allowance in an intent-to-use application will issue on the same

date that a registration would issue in a use application. The Office will not

publish any notice that a notice of allowance has been issued in the Official

Gazette.

The notice of allowance will state the serial number of the application, the name

of the applicant, the correspondence address, the mark, the identification of goods

or services, and the date of issuance of the notice of allowance. The notice of

allowance is a key document because the issuance date establishes the due date for

submission of the statement of use required prior to registration. The information

stated on the notice of allowance is also important. If the notice of allowance

includes any errors, the applicant should notify the Office immediately.[p.25]

6. Amendments between Issuance of the Notice of Allowance and Submission of the

Statement of Use

The only amendment permitted between the issuance of the notice of allowance and

the submission of the statement of use is an amendment to delete goods or services.

Trademark Rule 2.77, 37 C.F.R. Section 2.77. "Deletion" means the elimination of an

existing item in an identification of goods and services in its entirety. Deletion

is distinct from other types of amendments to limit, such as amendments to limit the

goods as to types, channels of trade or class of purchasers or to restrict an

existing item in scope by the introduction of some qualifying language or the

substitution of specific for more general terms. The Office will not consider any

other amendment to the application during this period. If the applicant submits any

other amendments during this period, the Office will place the amendments in the

file for consideration at the time of examination of the statement of use. The ITU

paralegal will advise the applicant of receipt of any such amendment and that the

amendment will not be considered until the examination of the statement of use.

The Office will process any change of address or change of attorney at any time

during the prosecution of an application, even during the period between issuance of

the notice of allowance and the filing of the statement of use.

7. Requests for Extensions of Time to File the Statement of Use

Trademark Act Section 1(d)(2), 15 U.S.C. Section 1051(d)(2), permits the Office to

extend the time for filing a statement of use upon a written request from the

applicant. Trademark Rule 2.89, 37 C.F.R. Section 2.89, sets forth Office policy and

procedure governing the filing and processing of such requests. Essentially, an

applicant may request one six-month extension without a showing of good cause and up

to four additional six-month extensions with a showing of good cause. Thus, the time

available for filing the statement of use may not be extended beyond thirty-six

months from the issuance of the notice of allowance.

The six-month period following issuance of the notice of allowance will not be cut

short by the grant of an extension. The extension will begin to run from the

expiration of the six-month period following the notice of allowance. Likewise, an

applicant will receive the full benefit of each extension before a subsequent

extension will begin to run. No extension will be granted for more than six months.

Trademark Rule 2.89(b), 37 C.F.R. Section 2.89(b).

The only amendment which is permitted in connection with the filing of a request

for an extension of time is an amendment to delete goods or services. If any other

amendment is submitted in conjunction with a request for an extension of time, the

Office will place the amendment in the application file for consideration [p.26] at

the time of examination of the statement of use. The Office will process any change

of address or change of attorney at any time during the prosecution of an

application, even if filed in conjunction with a request for an extension of time.

Any request for an extension of time must be filed by the entity which owns the

mark at the time the request is filed and must be executed by an individual

possessing statutory authority to do so on behalf of the specific type of applicant

entity. The individual must sign for an individual applicant, a general partner must

sign for a partnership and an officer must sign for a corporation or association. If

the party filing is different from the owner of record, the request should include

the reel and frame number of any relevant assignment recorded in the Assignment

Branch of the Office or other evidence that the party filing is the owner of the

application in accordance with Trademark Rule 2.186, 37 C.F.R. Section 2.186. If the

request does not include such evidence the ITU Unit will deny the request. The

applicant may establish ownership within the time provided in the action advising

the applicant of the denial, even if the time permitted for filing the statement of

use has expired. However, the applicant must file another request for an extension

of time before the time period related to the request which is under consideration

expires to avoid abandonment.

As noted above ( A.7.), only those individuals who possess statutory authority to

sign the original application are permitted to sign the request for an extension of

time. If the request is signed by any other person, the request for an extension of

time will be denied. Because the request must include a statement of a continued

bona fide intention to use the mark in commerce, only the applicant can execute the

request under the Act. In the case of a request for an extension of time, the

request cannot be re-executed by one with proper authority after the expiration of

the time permitted for filing the statement of use. The "color of authority"

provision of Trademark Rule 2.71(c), 37 C.F.R. Section 2.71(c), does not apply to

the filing of requests for extensions of time.

a. Requirements Related to the First Six-Month Extension

The applicant may request an initial six-month extension of time to file the

statement of use by filing a request for such an extension before the expiration of

the six-month period following the issuance of the notice of allowance. The request

must include the prescribed fee of $100.00 per class and a verified statement signed

by the applicant that the applicant has a continued bona fide intention to use the

mark in commerce. The statement must specify those goods or services specified in

the notice of allowance on or in connection with which the applicant has a continued

bona fide intention to use the mark in commerce. Trademark Rule 2.89(a), 37 C.F.R.

Section 2.89(a). The applicant may incorporate the goods and services specified in

the notice of allowance by reference.[p.27]

b. Requirements Related to Extensions Beyond the First Six-Month Extension -

Good Cause Extensions

The applicant may request up to a maximum of four six-month extensions to file the

statement of use in addition to the first six- month extension. Each request for

such an extension must be filed before the expiration of the previously granted

extension. The request must include the prescribed fee of $100.00 and a verified

statement signed by the applicant that the applicant has a continued bona fide

intention to use the mark in commerce. The statement must specify those goods or

services specified in the notice of allowance on or in connection with which the

applicant has a continued bona fide intention to use the mark in commerce. In

addition, each such request must include a showing of good cause. Trademark Rule

2.89(b), 37 C.F.R. Section 2.89(b).

The showing of good cause must include an allegation that the applicant has not

yet made use of the mark in commerce on or in connection with all of the goods or

services specified in the notice of allowance for which the applicant has a

continued bona fide intention to use the mark in commerce. The showing must also

include a statement of applicant's ongoing efforts to use the mark in commerce on or

in connection with the goods or services specified as those for which the applicant

has a continued bona fide intention to use the mark in commerce. Trademark Rule

2.89(d), 15 U.S.C. Section 2.89(d).

Efforts to use the mark in commerce may include "...without limitation, product or

service research or development, market research, manufacturing activities,

promotional activities, steps to acquire distributors, steps to obtain required

governmental approval, or other similar activities." Trademark Rule 2.89(d)(2), 37

C.F.R. Section 2.89(d)(2). In the alternative, the applicant must submit a

satisfactory explanation for the failure to make such efforts. The applicant's

statement concerning good cause need only refer to the appropriate types of

activities listed in the rule or similar types of activities. The applicant need not

provide an explanation or evidence providing details as to specific activities

related to the types delineated. For instance, the applicant may simply state that

it is engaged in manufacturing activities and promotional activities.

Any request for an extension of time, including the showing of good cause, will

become a part of the permanent Office record and open to the public as such. As

noted, the showing of good cause need only provide general statements identifying

the types of efforts the applicant has undertaken as stated in the rule. The showing

need not state specific facts which would disclose confidential business information

or other proprietary information. The Office will not require any evidence or

explanation in a showing of good cause.[p.28]

c. Identifying the Goods and Services in the Request for an Extension of Time

The goods and services identified in the request for an extension of time must

conform to the goods and services identified in the notice of allowance. If

appropriate, the applicant may incorporate the specification of goods and services

in the notice of allowance by reference. If goods or services are to be deleted, the

applicant should clearly specify those goods and services to be deleted.

If the applicant lists the goods and services specifically in the request for an

extension of time, and omits any goods or services which were listed in the notice

of allowance, the Office will delete those goods or services from the application

and will not grant the request as to the omitted items. Likewise, if the applicant

lists the goods and services specifically, and the wording in the listing of the

goods and services in the request does not conform to the wording of the

specification of goods and services in the notice of allowance, the Office will

delete from the application any wording not expressly included in the request in

conforming language and will not grant the request as to the deleted items. The

applicant cannot amend application later to reinsert the deleted goods or services

once they have been so deleted. Trademark Rule 2.89(f), 37 C.F.R. Section 2.89(f).

The paralegal in the ITU Unit will examine the identification of goods and

services specified in the extension request to determine whether the goods and

services specified conform to the goods and services specified in the notice of

allowance. The paralegal will delete any items from the identification of goods and

services in the application which are not either incorporated by reference or

specified in the extension request in conforming language.

As noted above, applicants may incorporate goods and services by reference in the

request for an extension of time. It is advisable to do so, if appropriate, to avoid

the possibility that goods or services will be deleted unintentionally. Thus, the

applicant may specify the goods or services by stating "those goods or services

identified in the notice of allowance" or "those goods or services identified in the

notice of allowance except..." followed by an identification of goods or services to

be deleted.

The only amendment permitted between issuance of the notice of allowance and

filing of the statement of use is an amendment to delete goods or services.

Trademark Rule 2.77, 37 C.F.R. Section 2.77. "Deletion" means the elimination of an

item from the identification of goods and services in its entirety as distinct from

other types of amendments to limit, such as amendments to limit the goods as to

types, channels of trade or class of purchasers or to restrict an existing item in

scope by the introduction of some qualifying language or the substitution of

specific for more general terms. The ITU paralegal will not [p.29] process any

proposed amendments filed with the request for an extension of time, other than

deletions, and will place other amendments in the file for consideration at the time

of examination of the statement of use. The paralegal will act on the extension

request, apart from any such proposed amendment, as specified above.

d. Filing a Request for an Extension of Time in Conjunction with a Statement

of Use

An applicant may file one final request for an extension of time at the time of

filing the statement of use or during any time remaining in the existing six-month

period in which a statement of use is filed. However, such a request is not

permitted if the grant of such an extension would extend the time for filing more

than thirty-six months beyond the issuance of the notice of allowance. Trademark

Rule 2.89(e), 37 C.F.R. Section 2.89(e). The applicant may not request any further

extensions of time after this request.

The purpose of such a request would be to secure additional time to correct any

deficiency in the statement of use which is of a type which must be corrected before

the expiration of the time permitted for filing the statement of use. Because the

statement of use may not be withdrawn, the applicant must correct any such

deficiency within the time provided to file the statement of use or the application

will become abandoned.

The request must conform to all relevant requirements including payment of the

applicable fee. If the request is not the first request for an extension of time,

and thus a showing of good cause is required with the request for an extension of

time filed with or after the statement of use, the applicant may satisfy the

requirement for a showing of good cause by asserting that applicant believes that it

has made valid use of the mark in commerce, as evidenced by the submitted statement

of use, but that if the statement of use is found to be fatally defective, the

applicant will need additional time to file a statement of use. Trademark Rule

2.89(e)(2), 37 C.F.R. Section 2.89(e)(2).

If the applicant files a final request for an extension of time in conjunction

with a statement of use, and the applicant submits fees sufficient for one, but not

both, the Office will apply the fees to the extension of time to avoid abandonment

of the application.

e. Processing of the Request for an Extension of Time

The Office will notify the applicant of the grant or denial of the request for an

extension of time. Trademark Rule 2.89(g), 37 C.F.R. Section 2.89(g). Any denial

will specify the reasons for the denial. The Office's failure to notify the

applicant of the grant or denial of the extension before the expiration of the

[p.30] existing period to file the statement of use or before the expiration of the

period requested does not relieve the applicant of the responsibility to file the

statement of use or a request for an extension of time within the relevant period.

If the applicant fails to file the statement of use or a request for an extension of

time within the time permitted, the application will become abandoned. Trademark Act

Section 1(d)(4), 15 U.S.C. Section 1051(d)(4).

If the Office denies the request for an extension of time but time remains in the

applicant's existing period for filing the statement of use, the applicant may file

the statement of use or another request for an extension of time to file the

statement of use. Otherwise, the applicant's only recourse after denial of the

request for an extension of time is a petition to the Commissioner. A petition from

the denial of a request for an extension must be filed within one month from the

mailing date of the denial of the extension of time. Trademark Rule 2.89(g), 37

C.F.R. Section 2.89(g). The ITU Unit will not accept any request to reconsider a

denial of a request for an extension of time. The ITU Unit will be responsible for

processing all requests for extensions of time to file statements of use.

8. Submission of the Statement of Use under Section 1(d) of the Act

As noted earlier ( A.1.a.), an intent-to-use applicant must file either an

amendment to allege use under Trademark Act Section 1(c), 15 U.S.C. 1051(c), or a

statement of use under Trademark Act Section 1(d), 15 U.S.C. Section 1051(d), as a

precondition to issuance of the registration. This section will discuss statements

of use only; the amendment to allege use is discussed above ( A.4.).

a. Form and Permissible Time Period for Filing a Statement of Use under

Section 1(d) of the Act

The statement of use should be entitled, "Statement of Use under Section 2.88."

Trademark Rule 2.88(d), 37 C.F.R. Section 2.88(d). The title should be placed at the

top of the first page. The mailing address should specify "Box ITU" also. Proper

identification of the statement of use will expedite handling, but the Office will

not take any action for failure to comply with these recommendations. The applicant

may submit other amendments related to the application with the statement of use.

The statement of use must be filed within six months of the issuance date of the

notice of allowance or within an extension of time for filing the statement of use

granted under Trademark Rule 2.89, 37 C.F.R. Section 2.89. For purposes of

establishing a date of receipt, the statement of use is not subject to the

certificate-of-mailing procedure under Rule 1.8, 37 C.F.R. Section 1.8. The

statement of use will be considered received on the date [p.31] it is actually

received or on the Express-Mail date under Rule 1.10, 37 C.F.R. Section 1.10.

Any statement of use filed before mailing of the notice of allowance is premature

and will not be considered. In such a case, the ITU Unit will return the statement

of use and refund the fee to the applicant. Trademark Rule 2.88(a), 37 C.F.R.

Section 2.88(a). If the statement of use is not filed or is filed later than

required, the application will be considered abandoned. Trademark Act Section

1(d)(4), 15 U.S.C. Section 1051(d)(4); Trademark Rule 2.88(h), 37 C.F.R. Section

2.88(h). A late statement of use will not be considered. The ITU Unit will return

the late statement of use to the applicant with any fees paid.

The applicant may file the statement of use only after the applicant has made use

of the mark on or in connection with all goods or services for which the applicant

will ultimately seek registration in the application, unless the applicant

specifically requests that the application be divided. Trademark Rule 2.88(c), 37

C.F.R. Section 2.88(c). Trademark Rule 2.87, 37 C.F.R. Section 2.87, permits an

applicant to divide the application as filed into two or more separate applications.

The purpose of filing a request to divide an application in conjunction with the

filing of a statement of use would be to effect issuance of a registration for goods

or services on or in connection with which the applicant has already made use while

maintaining an active application for the remaining goods or services. After the

division all applications retain the original filing date. The requirements

attendant to submission of a request to divide an application are discussed below (

B.15.).

b. Necessary Elements in a Complete Statement of Use under Section 1(d) of

the Act

The statement of use must include the following elements:

i. a verified statement that the applicant is believed to be the owner of the mark

and that the mark is in use in commerce, specifying the date of the applicant's

first use of the mark and first use of the mark in commerce, the type of ccmmerce,

those goods or services specified in the notice of allowance on or in connection

with which the mark is in use in commerce and the mode or manner in which the mark

is used;

ii. three specimens or facsimiles of the mark as used in commerce; and

iii. the prescribed fee.

Trademark Rule 2.88(b), 37 C.F.R. Section 2.88(b).

The filing fee for a statement of use is $100.00 per class. [p.32]

c. Minimum Requirements for a Statement of Use under Section 1(d) of the Act

The statement of use must include the following minimum elements to be referred to

the examining attorney for examination on the merits:

i. the prescribed fee;

ii. at least one specimen or facsimile of the mark as used in commerce; and

iii. a verification or declaration signed by the applicant stating that the mark

is in use in commerce.

Trademark Rule 2.88(e), 37 C.F.R. Section 2.88(e).

The ITU Unit will review the statement of use to determine whether it is timely

and whether it complies with the minimum requirements. As noted above ( A.8.a.), if

the statement of use is untimely, either because it is premature or late, the ITU

Unit will return the statement of use with any fees to the applicant.

If the statement of use is timely, but does not comply with one or more of the

minimum requirements, the ITU Unit will advise the applicant of the deficiency. The

applicant may correct the deficiency provided the time permitted for filing the

statement of use has not expired. Trademark Rule 2.88(g), 37 C.F.R. Section 2.88(g).

If the applicant does not correct the deficiency before the expiration of the

relevant time period, the statement of use will not be examined and the application

will be declared abandoned. In such a case, if the applicant has submitted the fee,

the ITU Unit will not refund the fee.

The applicant may not withdraw the statement of use and return to the previous

status of awaiting filing of the statement of use, even if the statement of use as

filed fails to meet the minimum requirements. Trademark Rule 2.88(g), 37 C.F.R.

Section 2.88(g). The applicant may request extensions of time to file the statement

of use in accordance with Trademark Rule 2.89, 37 C.F.R. Section 2.89, as discussed

above ( A.7.e.), including a final request for an extension filed with a statement

of use or during the time remaining in the existing period in which the statement of

use is filed.

The Office will not issue a filing receipt to acknowledge receipt of a statement

of use.

If an applicant files a statement of use and a request to divide the application

at the same time, and the fees submitted are insufficient for both, the fees will be

applied to the statement of use first and the applicant will be notified of the

deficiency. [p.33]

9. Examination of the Statement of Use

If the statement of use is timely and complies with the minimum requirements, the

ITU Unit will refer the entire application with the statement of use to the

responsible examining attorney for examination on the merits. The same examining

attorney who examined the application initially will examine the statement of use

unless the examining attorney has left the Office or assumed other duties.

a. Procedures Governing Examination of the Statement of Use

Examination of the statement of use follows the same procedural course as the

initial examination of the application under Trademark Rule 2.61 et seq., 37 C.F.R.

Section 2.61 et seq. The examining attorney should issue actions, as appropriate,

stating requirements and refusals and culminating in final action or acceptance of

the statement of use. The examining attorney may issue examiner's amendments or

priority actions, as appropriate. The applicant must respond to actions within six

months under routine Office procedure. If the examining attorney ultimately finds

the statement of use acceptable in all respects, the Office will notify the

applicant of its acceptance. The Office will then publish notice of the registration

of the mark and will issue the registration to the applicant. The application is not

once again subject to opposition. Trademark Rule 2.151, 37 C.F.R. Section 2.151.

If the examining attorney issues any requirements or refusals, the applicant may

respond under standard examination procedure. The applicant may appeal or petition

matters in the same manner and subject to the same procedures which would apply in

the initial examination of the application.

The applicant may amend or otherwise correct the statement of use during

examination, provided the applicant had complied with the minimum requirements

attendant to the statement of use before the expiration of the time permitted to

file the statement of use.

i. Complying with Minimum Requirements within the Time Permitted

The applicant must make valid use of the mark in commerce and must file a

statement of use meeting the minimum requirements, including at least one specimen,

before the expiration of the time permitted to file the statement of use. Trademark

Rule 2.71(d)(3), 37 C.F.R Section 2.71(d)(3). The applicant can provide substitute

specimens, during examination, after the expiration of the time permitted to file

the statement of use. However, the applicant must verify that the specimens were in

use before the expiration of the time permitted for filing the statement of use. If

the applicant attempts to amend the dates of use to state a date of first use in

commerce which is later than the time permitted for filing the statement of use, the

examining [p.34] attorney must refuse registration because the applicant failed to

make use within the time permitted and, as a result, the application is abandoned.

The examining attorney must refuse registration on the same grounds if the applicant

cannot provide an acceptable specimen which was in use in commerce before the

expiration of the time permitted for filing the statement of use.

Likewise, the party filing the statement of use must be the owner of the mark at

the time of filing. However, even after the expiration of the time permitted for

filing the statement of use, the applicant can provide information to establish that

the party who filed was the owner at the time the statement of use was filed through

a chain of title. Trademark Rule 2.186, 37 C.F.R. Section 2.186. The applicant must

do so within the specified response period. However, if the party which did file was

not the owner at the time of filing the statement of use, the applicant cannot

provide a substitute statement of use or the equivalent to correct this error after

the expiration of the time permitted for filing the statement of use. If the time

permitted for filing the statement of use has not yet expired, the applicant may

file a substitute statement of use in the name of the true owner.

Therefore, if the party filing the statement of use is not the owner of the mark

at the time of filing the statement of use, the examining attorney must reject the

statement of use. If no time remains within the time permitted for filing the

statement of use, the examining attorney must refuse registration because the

application is abandoned for failure to file the statement of use within the time

permitted.

Also, the person who signs the statement of use must have the authority to do so

under the Act. Only those persons who are authorized to sign the original

application have authority to sign the statement of use: the individual for an

individual applicant, a general partner for a partnership and an officer for a

corporation or association. As in the case of the original application, the person

who signs must have at least color of authority to sign in order for the statement

of use to be considered received in the Office.

If the person who signed the statement of use lacked even color of authority to do

so, the applicant cannot provide a statement of use or the equivalent, signed by a

proper person, after the expiration of the time permitted to file the statement of

use. If the person who signed the statement of use possessed at least color of

authority, as discussed below ( B.1.a.), the applicant can provide a substitute

statement of use or an affidavit or declaration signed by the proper person

verifying the facts as set forth in the statement of use after the expiration of the

time permitted for filing the statement of use. Trademark Rule 2.71(c), 37 C.F.R.

Section 2.71(c). The principles which govern the determination as to whether a

person possesses color of authority are discussed below ( B.1.a.) in relation to the

[p.35] signature requirements attendant to the filing of the original application.

If the person who signed the statement of use lacked even color of authority to so

do, and the time permitted for filing the statement of use has expired, the

examining attorney must refuse registration because the application is, therefore,

abandoned for failure to file the statement of use within the time permitted.

ii. Correcting Defects

The applicant may correct defects in the statement of use after the expiration of

the time permitted for filing the statement of use when compliance within the time

permitted for filing the statement of use is not required by the Act. However, the

applicant must respond to requirements related to these defects within the response

periods established under standard examination procedure to avoid abandonment of the

application.

As noted above ( A.9.a.i.), the applicant may provide substitute specimens after

the expiration of the time permitted for filing the statement of use. However, the

applicant must verify that the substitute specimens were in use in commerce before

the expiration of the time permitted for filing the statement of use.

As noted above ( A.9.a.i.), the applicant may establish chain of title during

examination, after the expiration of the time permitted for filing the statement of

use. The applicant may establish color of authority of the person who signed the

statement of use and provide a substitute statement of use signed by a proper person

during examination after the expiration of the time for filing the statement of use.

The applicant may correct the dates of use, subject to the limitations provided in

Trademark Rule 2.71(d), 37 C.F.R. Section 2.71(d), or the method of use clause after

the expiration of the time permitted for filing the statement of use. The applicant

may amend the identification of goods and services, subject to the general

restrictions governing such amendments under Trademark Rules 2.71(b) and 2.88(i)(1),

37 C.F.R. Sections 2.71(b) and 2.88(i)(1), after the expiration of the time

permitted for filing the statement of use. The applicant may amend the drawing,

subject to the restrictions generally governing amendments to drawings under

Trademark Rule 2.72, 37 C.F.R. Section 2.72, during examination after the expiration

of the time permitted for filing the statement of use.

iii. Withdrawal of the Statement of Use Prohibited

Once the applicant has filed the statement of use, the applicant may not withdraw

the statement of use and return to the previous status of awaiting submission of the

statement of use. Trademark Rule 2.88(g), 37 C.F.R. Section 2.88(g). The applicant

may not do so, even if the Office determines that the statement of use does not

comply with the minimum requirements. However, the [p.36] applicant may amend the

statement of use or file a substitute statement of use to correct even fatal defects

within the time permitted for filing the statement of use.

b. The "Clear-Error" Standard in Examination of the Statement of Use

For the purpose of examination of the statement of use, the Office will issue

requirements or refusals concerning matters specifically related to the statement of

use only. The Office will not issue any requirements or refusals concerning matters

which could have or should have been raised during initial examination, unless the

failure to do so in initial examination constitutes a clear error. "Clear error"

refers to an error which, if not corrected, would result in issuance of a

registration in violation of the Act. Cf. Century 21 Real Estate Corp. v. Century

Life of America, 10 USPQ2d 2034 (TTAB 1989); Granny's Submarine Sandwiches, Inc. v.

Granny's Kitchen, Inc., 199 USPQ 564 (TTAB 1978).

The examining attorney must act on all new issues in the examination of the

statement of use. Examples of such issues are presented below ( A.9.b.) in the

discussion of various areas of examination related to the statement of use. For

example, the examining attorney must issue an appropriate refusal if the specimens

fail to show use of the designation as a mark. However, the examining attorney may

not issue a refusal under Trademark Act Section 2(e)(1), 15 U.S.C. Section

1052(e)(1), unless the refusal is dictated by changed circumstances from the time of

initial examination or the failure to issue such a refusal would constitute clear

error.

If a significant length of time has elapsed since the initial examination, in some

unusual circumstances, the mark may have become descriptive or even generic as

applied to the goods or services. In such a case, the evidence of the descriptive or

generic use would not have been available during initial examination.

However, if evidence that the mark is merely descriptive was available during

initial examination, and thus the refusal could or should have been issued in

initial examination, the examining attorney cannot issue the refusal unless clear

error is present. That is, the evidence of descriptiveness must be substantial and

unequivocal. The examining attorney should not issue such a refusal on the basis of

information that was available during the initial examination unless clear error

exists.

Likewise, the examining attorney must not issue requirements or refusals related

to informalities which could or should have been addressed during the initial

examination. For example, if the examining attorney determines that the initial

declaration in support of the application was defective, the examining attorney

should not issue a requirement for a new declaration. [p.37]

If the goods or services were classified incorrectly and published for opposition

in the wrong class, the examining attorney should require correction of the

classification. In the case of any change of class after issuance of the notice of

allowance, the mark must be republished for opposition unless the Petitions and

Classification Attorney determines that republication is not necessary.

If a disclaimer could or should have been required during the initial examination,

the examining attorney should not require a disclaimer during the examination of the

statement of use unless there is clear error. For example, a disclaimer of all of

the wording in a mark may be required under the clear- error standard where the mark

consists of merely descriptive wording and distinctive design elements. Issuance of

a registration without such a disclaimer would violate the Act by affording the

applicant rights beyond those to which the applicant is entitled. In other cases

where the requirement for a disclaimer is subject to greater discretion, the

clear-error standard would not permit a disclaimer requirement when it could or

should have been stated in initial examination. The determination that a term is

descriptive or generic related to the requirement for a disclaimer is subject to the

substantial-and- unequivocal-evidence standard stated above.

Generally, the Office will not conduct any search for conflicting marks, or issue

any refusals on that basis, in the examination of the statement of use. However, if

the examining attorney determines that a second search is necessary, due to an

amendment of the mark or an amendment of the goods or services, the examining

attorney will conduct a second search and take action, as appropriate. Likewise, the

Office may discover a clear error under Trademark Act Section 2(d), 15 U.S.C.

Section 1052(d), in the course of internal Office quality review or through a letter

of protest. The Office will not issue any refusal under Section 2(d) in the

examination of the statement of use unless the failure to do so constitutes a clear

error. For the purposes of Section 2(d), the conflict between the application and

registration at issue must be such that reasonable minds could not differ as to the

necessity for the refusal, that is, failure to issue the refusal would result in

issuance of a registration in violation of the Act.

In the case of an intent-to-use application, as in all applications, the Office

will deny as untimely letters of protest which are filed more than thirty days after

publication of a mark. In re Pohn, 3 USPQ2d 1700 (Comm'r Pats. 1987).

c. Examination of the Verified Statement of Use

The examining attorney should review the statement of use itself to confirm that

the statement conforms to the requirements of the Act and the rules. As noted above

( A.8.a.), the statement must include an averment that the applicant is the owner of

the [p.38] mark, the dates of use, an identification of the goods and services and

the method of use. The statement must be verified. Trademark Act Section 1(d), 15

U.S.C. Section 1051(d); Trademark Rule 2.88(b), 37 C.F.R. Section 2.88(b).

The averment of ownership and use in commerce are essential elements of the

statement. If the averment of ownership is omitted, the examining attorney must

require the applicant to submit a verified statement including this averment.

If the statement of use was executed before the stated dates of use, the examining

attorney must require that the statement be re-executed. The dates of use may not be

amended to a date later than the expiration of the time permitted for filing of the

statement of use. The applicant must verify amendments to the dates of use in the

statement of use as in the application itself. Trademark Rule 2.71(d), 37 C.F.R.

Section 2.71(d).

The date of first use in commerce must be no earlier than the date of first use

anywhere. Office policies governing the correction of dates which do not conform to

this requirement in use applications apply to statements of use also. TMEP section

806.03. The applicant must state dates of use for each class. The dates of first use

for each class must apply to at least one item in the class but need not apply to

more than one item. However, the applicant must have used the mark on all items

covered by the statement of use before execution of the statement unless the

applicant requests to divide the application under Trademark Rule 2.87, 37 C.F.R

Section 2.87.

The applicant must identify the type of commerce according to the same standards

which govern use applications. TMEP section 806.05.

The applicant must indicate the method of use. Office policies governing this

requirement relative to use applications apply to the statement of use as well. TMEP

section 808.09. If the method of use indicated in the statement of use is

inconsistent with the intended method of use stated in the initial application, the

examining attorney should assume that the later statement is controlling and should

not raise this inconsistency as an issue in examination.

d. The Identification of Goods and Services in the Examination of the

Statement of Use

"The goods or services specified in a statement of use must conform to those goods

or services identified in the notice of allowance." Trademark Rule 2.88(i)(1), 37

C.F.R. Section [p.39] 2.88(i)(1). The referenced rule further recommends that, in

appropriate cases, applicants specify the goods or services by stating "those goods

or services identified in the notice of allowance" or "those goods or services

identified in the notice of allowance except..." followed by an identification of

the goods or services to be deleted.

The rules preclude additions to the identification of goods or services in all

applications, as noted below. Trademark Rule 2.71(b), 37 C.F.R. Section 2.71(b). If

the applicant proposes to add to the identification of goods or services in

conjunction with the statement of use, the examining attorney must reject the

amendment.

If the applicant omits any goods or services specified in the notice of allowance

from the identification of goods or services in the statement of use, and the

applicant has not expressed a clear intention to delete those goods or services, the

examining attorney must inquire as to the discrepancy. The examining attorney will

permit the applicant to amend the statement of use to reinsert any omitted goods or

services, provided the applicant did not delete the goods or services expressly in

an amendment and provided the applicant verifies that the mark was in use in

commerce with those goods or services before the expiration of the time permitted to

file the statement of use. Trademark Rule 2.88(i)(2), 37 C.F.R. Section 2.88(i)(2).

The applicant may amend to delete items or to limit the identification of goods

and services. For example, the applicant may amend to limit the goods as to types,

channels of trade or class of purchasers or to restrict an existing item in scope by

the introduction of some qualifying language or thesubstitution of specific for more

general terms. The applicant may clarify the identification of goods or services,

provided the amendment does not exceed the scope of goods or services specified in

the notice of allowance. The principles which govern amendments to delete, limit or

clarify in general also apply in the examination of the statement of use. If, due to

any amendment to the identification of goods and services, the international class

must be amended, the application must be republished for opposition unless the

Petitions and Classification Attorney determines that republication is not

necessary.

e. Examination of the Statement of Use Related to the Drawing

Trademark Rule 2.51, 37 C.F.R. Section 2.51, specifies that the drawing in an

intent-to-use application must be a substantially exact representation of the mark

as intended to be used and as actually used upon filing of the amendment to allege

use before publication or the statement of use after issuance of the notice of

allowance. Trademark Rule 2.88(j), 37 C.F.R. Section 2.88(j). An applicant may not

amend the mark in a drawing if the amendment constitutes a material alteration of

the mark. Also, the mark in the drawing must agree with the mark as used on [p.40]

the specimens. The same standards which apply to use applications in determining

whether specimens support use of the mark and in determining whether amendments can

be permitted apply in the examination of the statement of use.

Therefore, in an intent-to-use application, the examining attorney must require

amendment to the mark or the submission of new specimens if the mark in the drawing

is not a substantially exact representation of the mark as used on the specimens.

Trademark Rule 2.72(c), 37 C.F.R. Section 2.72(c). However, if amendment of the mark

would constitute a material alteration of the mark in such a case, the examining

attorney must require substitute specimens only. The same standards applied in use

applications in determining whether the specimens support use of the applied-for

mark apply to specimens in intent-to-use applications. See Examination Guide 2-89.

Cf. United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481 (TTAB

1988).

If the applicant submits substitute specimens in conjunction with a statement of

use, the applicant must verify that the substitute specimens were in use in commerce

before the expiration of the time permitted to file the statement of use. Trademark

Rule 2.59(b), 37 C.F.R. Section 2.59(b). If the dates of first use change as a

result of the submission of new specimens, the applicant must also amend the dates

of first use in the statement of use with a supporting affidavit or declaration.

f. Consideration of the Specimens of Use in the Examination of the Statement

of Use

Apart from the statement of use itself, the primary focus of examination of the

statement of use is the specimens of use. The examining attorney must evaluate the

specimens to confirm that the specimens exhibit appropriate use. Trademark Act

Section 45, 15 U.S.C. Section 1127. The examining attorney must also examine the

specimens to confirm that the specimens show use of the subject matter as a

trademark or service mark on or in connection with the goods or services identified

in the statement of use. The examining attorney will also consider any questions

regarding ownership or control of the mark arising in the examination of the

specimens. These issues are typical of those which are appropriate for action in

examination of the statement of use. The examining attorney should issue

requirements and refusals, as appropriate, based on the examination of the

specimens, subject to the same standards which govern the examination of specimens

in any other phase of examination. TMEP section 808.

10. Revival of Abandoned Intent-to-Use Applications

As noted below ( B.13.), petitions to revive all abandoned applications must be

filed promptly. Trademark Rule 2.66(d), 37 C.F.R. Section 2.66(d). Generally, a

petition to revive should be filed within two months of abandonment. In any petition

to revive an abandoned application, the applicant must show that the delay [p.41] in

responding was unavoidable. Delays due to circumstances which could have been

avoided with the exercise of a modicum of care and attention will not be considered

unavoidable delays.

In addition to the requirements which apply to all petitions to revive, a petition

to revive an intent-to-use application, abandoned due to the failure to file the

statement of use within the time allowed, is subject to additional requirements. The

petition must include a fee equal to the required fees for the number of requests

for extensions of time to file the statement of use which should have been filed if

the application had not been abandoned and either a statement of use or a request

for an extension of time. Trademark Rule 2.66(c), 37 C.F.R. Section 2.66(c).

The referenced fees are in addition to the standard petition and any statement of

use fees. If an applicant has already filed a statement of use, the applicant need

not file another statement of use with the petition. If a response to an outstanding

Office action is due, the applicant must include that response with the petition.

However, the Office will not grant a petition to revive an intent-to- use

application if the grant of the petition would extend the period for filing the

statement of use beyond thirty-six months after issuance of the notice of allowance.

Trademark Rule 2.66(d), 37 C.F.R. Section 2.66(d).

11. Assignment of Intent-to-Use Applications

The 1988 amendments to the Act provide as follows:

However, no application to register a mark under section 1(b) shall be assignable

prior to the filing of the verified statement of use under section 1(d), except to a

successor to the business of the applicant, or portion thereof, to which the mark

pertains, if that business is ongoing and existing.

Trademark Act Section 10, 15 U.S.C. Section 1060.

The Office will not examine proposed assignments to determine compliance with this

provision as a general rule. However, the examining attorney will inquire to

determine whether an assignment conforms to the requirements of this provision if

the question is raised by the information of record. If the examining attorney

issues an inquiry as to compliance, the applicant's response that the assignment was

in compliance with the law is sufficient to resolve the issue.

As discussed in detail below ( B.11.b.), the applicant bears the burden of

recording and notifying appropriate Office personnel of assignments or changes of

name to ensure that the registration [p.42] issues in the name of a new owner.

Trademark Rule 2.187, 37 C.F.R. Section 2.187.

12. Mailing Procedures and Fees Related to Intent-to-Use Applications

a. Use of the "Box ITU" Designation

Applicants are encouraged to include "Box ITU" in the address when submitting the

following:

i. statements of use under Section 1(d) of the Act, Trademark Rule 2.88, 37

C.F.R. Section 2.88, and

ii. requests for extensions of time to file statements of use under Trademark Rule

2.89, 37 C.F.R. Section 2.89.

Rule 1.1(h), 37 C.F.R. Section 1.1(h). Applicants should not use the "Box ITU"

designation when filing the intent-to-use application itself, amendments to allege

use or when filing routine responses to Office actions in intent-to- use

applications because it may delay processing.

b. The Certificate-of-Mailing Procedure

The following intent-to-use papers are specifically excepted from the

certificate-or-mailing procure:

i. statements of use under Section 1(d) of the Act,

ii. requests for extensions of time to file statements of use under Trademark Rule

2.89, 37 C.F.R. Section 2.89, and

iii. amendments to allege use under Section 1(c) of the Act.

Rule 1.8(a), 37 C.F.R. Section 1.8(a). Also, the initial filing of all trademark

applications, including intent-to-use applications, is excepted from this procedure.

Thus, any of these papers will be considered filed on the date actually received or

on the date specified under Rule 1.10, 37 C.F.R. Section 1.10, concerning the use of

"Express Mail."

c. Fees Related to Intent-to-Use Applications

The filing fee for an intent-to-use application itself is $175.00 per class. The

fee for filing an amendment to allege use, a statement of use or a request for an

extension of time is $100.00 per class. Trademark Rule 2.6, 37 C.F.R. Section 2.6.

[p.43]

B. Provisions Affecting All Applications

Certain changes in Office policy and procedure associated with the 1988 amendments

and revisions to the rules affect all applications, that is, use applications under

Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), intent-to-use applications

under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b), as well as applications

filed under Trademark Act Section 44, 15 U.S.C. Section 1126. Those changes will be

set forth in this section.

1. Filing-Date Requirements

Trademark Rule 2.21, 37 C.F.R. Section 2.21, sets forth the minimum requirements

for receiving a filing date for all types of applications. These minimum

requirements do not include all of the requirements which may ultimately apply for

registration of the mark, but merely those formal requirements which must be met to

receive a filing date.

a. Applicant's Signature

Under the rule, as revised, all applicants are required to provide a declaration

or verification signed by the applicant to receive a filing date. Because the filing

of an application for the Principal Register now establishes a constructive date of

use, contingent on issuance of a registration, under Trademark Act Section 7(c), 15

U.S.C. Section 1057(c), the rule now imposes this requirement.

If an application is submitted unsigned, the Application Section will not grant a

filing date and will return the papers to the applicant. If an unsigned application

reaches the examining attorney in error, the examining attorney should return the

application to the Application Section for appropriate action.

Under Trademark Act Section 1, 15 U.S.C. Section 1051, only the following persons

have statutory authority to sign: the individual in an application filed by an

individual, a general partner in a partnership application or an officer in an

application filed by a corporation or association.

If the applicant submits a signed declaration or verification, the examining

attorney will determine whether the person who signed had authority to sign for the

applicant under the Act. If the person did not, the applicant may submit a

substitute declaration and retain the filing date, provided the person who signed

initially possessed color of authority to sign. Persons having color of authority

are those who have firsthand knowledge [p.44] of the truth of the statements in the

application and who also have actual or implied authority to act on behalf of the

applicant. Trademark Rule 2.71(c), 37 C.F.R. Section 2.71(c).

For example, in the case of a corporate applicant, a nonofficer, such as a

manager, who had the requisite knowledge of the facts relevant to the application

and actual or implied authority to act on behalf of the applicant, would possess

color of authority, though not proper authority under the Act. In such a case, a

substitute declaration could be submitted during prosecution of the application to

correct this defect. An attorney who is an employee of a corporation might also

satisfy the criteria.

On the other hand, the applicant's private attorney would not ordinarily be

regarded as possessing color of authority to sign on behalf of an applicant. Private

attorneys do not usually have firsthand knowledge of a client's business or the

authority to act on behalf of a client, other than as legal representative. Here,

the defect could not be corrected by filing a substitute verification or

declaration, confirming the facts in the application, signed by an appropriate

person. If the person who signed the application lacked even color of authority to

sign on behalf of the applicant, the examining attorney must refuse registration

because the application did not meet the requirements of Trademark Rule 2.21, 37

C.F.R Section 2.21, for receiving a filing date.

If the examining attorney determines that the person who signed for the applicant

lacked the requisite authority, but the person possessed at least color of

authority, the examining attorney will require a substitute declaration or

verification.

The Office will accept copies of signed applications for the purpose of granting a

filing date. Applicants cannot send copies of applications by fax directly to the

Office, but the Office will accept copies which have been produced by fax in the

same manner as any other copy. However, if a copy is filed, the applicant must

provide the signed original copy of the application during prosecution. If the

applicant has not done so earlier, the examining attorney will require that the

applicant do as in the first action in the case. In no case will anything other than

a certificate or certified copy of a foreign registration be accepted for purposes

of granting a filing date in an application based on Trademark Act Section 44(e), 15

U.S.C. Section 1126(e).

b. Drawing Size

Effective July 3, 1989, the Office requires that drawings conform to the size

requirements specified in Trademark Rule 2.52(c), 37 C.F.R. Section 2.52(c), to

receive a filing date. If the mark in a special-form drawing is displayed in an area

larger than four inches by four inches, it will be regarded as not being in

substantial conformity with the rule and the application will be denied a filing

date and returned to the applicant. If an [p.45] examining attorney discovers an

application with a drawing which does not conform to this requirement, the examining

attorney should return the application to the Trademark Services Division for

appropriate handling. It should not be examined.

Other changes relating to the minimum requirements for receiving a filing date

which relate to specific types of applications are noted under the discussion of

those specific types of applications.

2. Identifying the Applicant and Applicant's Address

Trademark Rule 2.33(a)(1)(ii), 37 C.F.R. Section 2.33(a)(1)(ii), has been revised

to state the requirements related to identifying a partnership. The rule now

specifies that the application must identify "the state or nation under the laws of

which the partnership is organized." This revision merely reflects long-standing

Office practice. The applicant must also provide the names of all general partners

and their state or nation or incorporation or their citizenship, as appropriate.

Also, an individual applicant may provide either a business or residence address.

Both addresses are no longer required.

3. Drawings

Trademark Rule 2.51(d), 37 C.F.R Section 2.51(d), has been added to provide

guidance concerning the nature of drawings in the case of certain unusual types of

marks. The rule provides as follows:

(d) Broken lines should be used in the drawing of a mark to show placement of the

mark on the goods, or on the packaging, or to show matter not claimed as part of the

mark, or both, as appropriate. In an application to register a mark with

three-dimensional features, the drawing shall depict the mark in perspective in a

single rendition.

This provision is intended to provide guidance to applicants wishing to register

certain types of marks, such as configurations of goods or configurations of

packaging for goods and similar marks. The provision brings the rules into

conformity with current practice. The drawing should clearly define the matter the

applicant claim as its mark. See In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983)

. If the mark is three-dimensional, the drawing should present the mark in three

dimensions. In re Schaefer Marine, Inc., 223 USPQ 170 (TTAB 1984).

Trademark Rule 2.52(e), 37 C.F.R. Section 2.52(e), has been revised to simplify

the color linings used to identify the colors orange and yellow or gold in drawings

of marks. If an applicant employs the color linings formerly designated for these

colors, [p.46] the examining attorney should not require a new drawing. The revised

rule has been adopted for the convenience of applicants, and the Office will allow a

reasonable time for applicants to adjust to the new coding.

Trademark Rule 2.52(d), 37 C.F.R. Section 2.52(d), has been amended to modify the

content of the drawing heading. Specifically, it now requires that an applicant

claiming the benefit of a foreign application under Trademark Act Section 44(d), 15

U.S.C. Section 1126(d), specify the priority date in the drawing heading. It also

recommends that applicants provide, as a part of the heading, a description of the

essential elements of the mark in the case of a special-form drawing.

4. Specimens - Requirements

Trademark Rules 2.56 and 2.57, 37 C.F.R. Sections 2.56 and 2.57, have been revised

to reduce the number of specimens or facsimiles required in an application from five

to three. In view or this rule, the public may remove only two surplus copies of

specimens from the file permanently. At least one original of each type of specimen

submitted must be retained in the file to ensure a complete record of the case. In

the case of applications filed before November 16, 1989, the Office will not require

more than three specimens per class in any action taken on or after that date.

The referenced rules have also been revised to reflect the provisions of the 1988

amendments revising Trademark Act Section 45, 15 U.S.C. Section 1127. Specifically,

the definition of "use in commerce" has been revised to provide that when the nature

of the goods makes placement of the mark on the goods, containers, tags, labels or

displays associated with the goods impracticable, then placement of the mark on

documents associated with the goods or their sale constitutes use in commerce. The

referenced rules have been amended to reflect this change. See In re E.A. Miller &

Sons Packing Co., 225 USPQ 592 (TTAB 1985). Therefore, the examining attorney should

accept documents associated with the goods or their sale, in the case of goods sold

in bulk or in similar cases, where placement of the mark on the goods themselves is

impracticable.

The referenced rules regarding specimens or facsimiles have also been revised to

establish 8.5 by 11 inches as the maximum size permitted for such items. This

revision brings the rule into conformity with the preferred size indicated for all

filings and standards prevailing in federal practice in general.

5. Specimens - Examination

The 1988 amendments also revise the definition of "use in commerce" to adopt a

stricter standard. The Act now states, "The term 'use in commerce' means the bona

fide use of a mark in the ordinary course of trade, and not merely to reserve a

right in a [p.47] mark." Trademark Act Section 45, 15 U.S.C. Section 1127. This

stricter definition of "use in commerce" applies to all applications, affidavits of

use and renewals filed on or after November 16, 1989. Cf. Ralston Purina Company v.

On-Cor Frozen Foods Inc., 746 F.2d 801, 223 USPQ 979 (Fed. Cir. 1984).

The Office will not inquire into the sufficiency of an applicant's or registrant's

use in the examination of applications, amendments to allege use, statements of use,

affidavits of use or renewals unless the specimens or other evidence of record

clearly raise a question concerning the applicant's or registrant's use. The

consideration of whether a particular use satisfies the statutory definition is more

appropriate in an inter partes proceeding. The examining attorney should require new

specimens generally under the same circumstances where the examining attorney would

have required new specimens prior to the 1988 amendments. If the specimens appear to

be temporary in nature, the examining attorney may require specimens of a more

permanent nature.

Example - If an applicant seeks to register a mark suggesting a Christmas theme

for greeting cards and submits as specimens birthday cards with an additional pasted

label displaying the mark, the specimens could not be regarded as exhibiting "use in

commerce." The examining attorney should refuse registration and require substitute

specimens exhibiting use in commerce or an explanation to establish use in commerce.

When action is necessary, in appropriate cases, the examining attorney should

require additional product or sales literature concerning the use of the mark to

permit full consideration of the issue. Trademark Rule 2.61(b), 37 C.F.R. Section

2.61(b).

6. Identifications of Goods and Services

Trademark Rule 2.71, 37 C.F.R. Section 2.71, restricts amendments to the

identification of goods or services as follows, "The identification of goods or

services may be amended to clarify or limit the identification, but additions will

not be permitted." Trademark Rule 2.71(b), 37 C.F.R. Section 2.71(b).

This rule applies to applications filed on or after November 16, 1989. The rule

also applies to applications filed before November 16, 1989, for the purposes of any

action taken on or after that date. However, if the Office issued a requirement or

suggested an amendment in an action prior to that date, and the applicant submits an

amendment substantially complying with the requirement or suggestion on or after the

effective date, the examining attorney should accept the amendment, even though it

does not comply with the new rule, if it is otherwise proper. [p.48]

As noted previously, Trademark Act Section 7(c), 15 U.S.C. Section 1057(c),

provides that the filing of any application for registration on the Principal

Register establishes constructive use and nationwide priority contingent on issuance

of the registration. The identification of goods and services in an application,

therefore, defines the scope of those rights established by the filing of an

application for the Principal Register. The following sections discuss

identifications of goods and services in general; additional information relevant to

the identification of goods and services in an intent- to-use application is

presented above with the specific discussion of such applications.

a. Limiting the Identification of Goods and Services

As indicated above, the rules permit amendments to limit the identification of

goods and services. The rules also refer to "deletion" in relation to the

identification of goods and services. See, e.g., Trademark Rule 2.74, 37 C.F.R.

Section 2.74. "Deletion" means the elimination of an existing item in an

identification of goods and services in its entirety. Deletion is distinct from

other types of amendments to limit, such as amendments to limit the goods as to

types, channels of trade or class of purchasers or to restrict an existing item in

scope by the introduction of some qualifying language or the substitution of

specific for more general terms.

Deletions from the identification of goods and services are permitted. If the

applicant wishes to amend the identification of goods and services to delete one or

more items, the examining attorney should accept the amendment, provided it is

timely and otherwise proper. However, once the applicant has expressly amended the

identification of goods and services to delete an item it may not be reinserted in a

later amendment.

If an applicant wishes to amend the identification of goods and services to insert

an item which is equivalent to or logically encompassed by an item already included

in the identification of goods and services, the examining attorney should permit

the amendment, provided it is timely and otherwise proper.

If the applicant wishes to amend the identification of goods and services to

restrict one or more of the items by inserting qualifying language or substituting

more specific language, the examining attorney should accept the amendment, provided

it is timely and otherwise proper.

Example - If the applicant initially identifies the goods as "publications," the

applicant may amend to substitute one or more terms which fall under the definition

of publications. Likewise, if an applicant identifies its goods as "pamphlets," the

applicant may amend to indicate brochures or [p.49] both because these terms are

generally equivalent and interchangeable. In either case, the applicant must specify

the subject matter.

Example - If the Applicant initially identifies the goods as "football uniforms,"

the applicant may amend to indicate football uniforms in Class 25 and football

helmets and shoulder pads in Class 28. These goods are logically included within the

initial identification. Footballs, however, could not be added; this would add an

item not logically included within the original identification.

Example - If the applicant initially identifies the services as "prepaid medical

services" and wishes to amend to underwriting prepaid medical plans and health care

services in the nature of a health maintenance organization, the amendment should be

permitted. Both specific services are logically included under prepaid medical

services.

On the other hand, an applicant may not amend an identification of goods or

services to add or substitute a term which is not logically included within the

scope of the terms originally stated or which is otherwise qualitatively different

from the goods and services as originally stated.

Example - If the applicant identifies the goods as "computer programs," the

applicant may not add or substitute computers or other types of computer hardware to

the listing.

Example - If the applicant initially identifies the goods as "hats," the applicant

may not add or substitute scarfs in the identification of goods. Likewise, the

applicant may not add or substitute shirts for slacks.

Example - If the applicant identifies its services as "ophthalmologist's services"

and proposes to amend the identification to medical services, the amendment should

not be permitted. The amendment would expand the identification to include services

beyond the scope of those identified initially.

The scope of the goods and services, as originally identified or as amended by an

express amendment, establishes the outer limit for any later amendments. [p.50]

Because the rule precludes additions to the identification of goods and services,

examining attorneys should not require or suggest unduly restrictive identifications

of goods and services. See In re Sentry Chemical Company, 230 USPQ 556 (TTAB 1986).

0nce the identification has been limited, it cannot be expanded later. Also, in

requiring amendments to the identification of goods and services, examining

attorneys should generally advise applicants that additions to the identification of

goods and services are not permitted. This subject is discussed in greater detail

above in conjunction with intent-to-use applications.

b. Clarifying the Identification of Goods and Services

Under the rule, an applicant may amend "to clarify" the identification of goods

and services. The applicant may clarify an identification of goods and services

which is indefinite or overly broad to identify goods or services which are within

the scope of the goods and services as identified initially. As noted, the filing of

an application for registration on the Principal Register establishes a constructive

date of first use in commerce, contingent on issuance of the registration. Trademark

Act Section 7, 15 U.S.C. Section 1057. Accordingly, the applicant may not expand

those riqhts through amendment of the identification of goods and services.

Thus the applicant may amend from the more general to the specific, but the

applicant may not amend the specific to the more general. The scope of the goods and

services identified initially, or as limited by an express amendment, establishes

the outer limit for permissible amendments. Classification may provide some guidance

in determining whether an amendment exceeds the scope of the goods and services

identified initially, but it is not controlling. The examining attorney may suggest

and may permit amendments to the identification of goods and services resulting in a

change of class, provided the amended identification does not exceed the scope of

the original identification.

Example - If an applicant has erroneously identified its goods and services as

"menus," but in fact, the applicant intends to register the mark for restaurant

services, the applicant may not amend the identification of goods to "restaurant

services." In such a case, the original identification, which is specific and narrow

in scope, may not be expanded to services beyond the scope of that identification.

Example - If an applicant has erroneously identified its goods and services as

"packaging and labels," but in fact, the applicant intends to register the mark for

toys, the applicant may not amend to correct the [p.51] identification. The initial

identification failed to indicate the nature of the applicant's goods and services

in any form, and therefore, the examining attorney must reject the amendment to

insert an identification of goods and services beyond the scope of those stated

initially.

Example - If an applicant has identified its goods and services as "advertising

and business" the applicant may not amend to specific goods or to services other

than those within the scope of these terms, generally those services included in

International Class 35.

7. Claim of Acquired Distinctiveness

The 1988 amendments revise Trademark Act Section 2(f), 15 U.S.C. Section 1052(f),

to permit the filing of a prima facie showing of acquired distinctiveness based on

five years use running up to the date the claim is made. The Act now states:

The Commissioner may accept as prima facie evidence that the mark has become

distinctive, as used on or in connection with the applicant's goods in commerce,

proof of substantially exclusive and continuous use thereof as a mark by the

applicant in commerce for the five years before the date on which the claim of

distinctiveness is made.

Trademark Act Section 2(f), 15 U.S.C. Section 1052(f).

The Act previously required that the relevant five-year period precede the filing

date of the application. Under the new provision, therefore, any five- year claim

submitted on or after November 16, 1989, is subject to the new time period. This

will apply even if the application was filed before November 16, 1989. See Trademark

Rule 2.41(b), 37 C.F.R. Section 2.41(b). Note the discussion above concerning claims

of acquired distinctiveness in intent-to-use applications ( A.3.f.).

8. Supplemental Register

The 1988 amendments eliminate the one-year-lawful-use requirement for eligibility

for the Supplemental Register. Therefore, on or after November 16, 1989, an

applicant may apply for registration on the Supplemental Register at any time after

commencing use of the mark. Likewise, on or after November 16, 1989, an applicant

may amend a pending application to seek registration on the Supplemental Register at

any time after use of the mark has commenced. The applicant may do so even if the

original application for the Principal Register was filed before [p.52] November 16,

1989. See Trademark Rule 2.47, 37 C.F.R. Section 2.47. However, if the application

was filed before November 16, 1989, and the applicant had not used the mark in

commerce for one year before the filing date, and the applicant amends to the

Supplemental Register on or after November 16, 1989, the date of the amendment to

the Supplemental Register becomes the effective filing date of the application.

As noted above ( A.3.g.), an intent-to-use applicant may file an amendment to the

Supplemental Register only after use has commenced and after the filing of an

acceptable amendment to allege use or a statement of use. In such a case, the

effective filing date of the application will be changed to the date on which the

applicant filed the amendment to allege use under Section 1(c) of the Act or the

statement of use under Section 1(d) of the Act.

In requesting registration on the Supplemental Register in either the original

application or in an amendment to the Supplemental Register, the applicant need not

include an additional statement as to lawful use. Although Section 23 still includes

an explicit reference to lawful use, any use which is the basis for an application

on either the Principal or the Supplemental Register must be lawful. It need not be

stated explicitly.

In an application under Section 44 of the Act, the applicant may seek registration

on the Supplemental Register without alleging lawful use in commerce and without

alleging use anywhere in the world. Trademark Rule 2.47(b), 37 C.F.R. Section

2.47(b).

The 1988 amendments also add the following language to Trademark Act Section 27,

15 U.S.C. Section 1095, "Registration of a mark on the Supplemental Register shall

not constitute an admission that the mark has not acquired distinctiveness."

Examining attorneys, therefore, should note this provision in presenting any

refusals or requirements related to the nondistinctive character of a mark

previously registered on the Supplemental Register.

9. Affidavits of Use under Section 8

The 1988 amendments modify the requirements for the content of an affidavit of use

which must be filed between the fifth and sixth anniversaries of registration.

Trademark Act Section 8, 15 U.S.C. Section 1058. Under the new provision, the

registrant must identify the specific goods or services on or in connection with

which the mark is in use in commerce. Similarly, if the registrant elects to present

an explanation of excusable nonuse, this explanation must also relate to specific

goods or services.

Formerly, the allegation of use in commerce related to one or more classes with no

requirement to specify the goods or services within a class on or in connection with

which the mark was in use. If the registrant fails to provide an allegation of use

or a [p.53] satisfactory explanation as to nonuse as to any goods or services in the

registration,those goods or services will be cancelled from the registration. If the

original affidavit of use fails to specify the goods and services, the registrant

may not amend the affidavit to correct this omission after the expiration of the

period during which the affidavit is due. The registrant may incorporate the goods

and services by reference. For example, the registrant may state, "those goods and

services specified in the registration" or "those goods and services specified in

the registration except..." specifying any goods or services to be deleted.

The new provision also explicitly requires specimens of use to support the

affidavit. Formerly, the Act required a "showing" and the Trademark Rules of

Practice required as follows, "The statement must be supported by evidence which

shows that the mark is in use, and normally such evidence consists of a specimen or

a facsimile specimen which is currently in use, or a statement of facts concerning

use." In view of the 1988 amendments, the rules have been revised to specify that

specimens or facsimiles are required. Trademark Rules 2.161 and 2.162, 37 C.F.R.

Sections 2.161 and 2.162.

Specimens of use must be provided before the expiration of the sixth year

following registration. If the registrant fails to do so, the registration will be

cancelled. If the registrant does provide specimens, but the Office determines that

those specimens are unacceptable, the Office will require substitute specimens. In

such a case, the registrant must provide specimens of use within the time provided.

Substitute specimens may be filed after the expiration of the sixth year. If the

registrant fails to do so, the registration will be cancelled. The registrant must

also verify in an affidavit or a declaration under Trademark Rule 2.20, 37 C.F.R.

Section 2.20, that the substitute specimens were in use in commerce before the

expiration of the sixth year following registration.

Registrants filing affidavits under Section 8 should also note the revised rule

concerning the establishment of ownership. Trademark Rule 2.186, 37 C.F.R. Section

2.186, permits a registrant to establish ownership either by recording an assignment

in the Assignment Branch of the Office or by submitting proof of the assignment

without recording.

10. Term and Renewal

The 1988 amendments reduce the registration and renewal term from twenty to ten

years. Trademark Act Sections 8 (a) and 9, 15 U.S.C. Sections 1058(a) and 1059.

Accordingly, registrations issued on or after November 16, 1989, will be issued for

ten-year periods and subject to renewal for ten-year periods. Registrations issued

prior to that date remain in force for their existing term of twenty years, but are

subject to renewal for ten-year periods. Trademark Rule 2.181, 37 C.F.R. Section

2.181. For the [p.54] purpose of determining the relevant renewal period, the Office

will adhere to the following policy during the transition.

i. If the registration expires on or after November 16, 1989, the registration

will be renewed for ten years. The Office will not take final action to grant any

such renewal until November 16, 1989.

ii. If the registration expires before November 16, 1989, and the Office takes

final action to grant the renewal before that date, the registration will be renewed

for twenty years.

iii. If the registration expires before November 16, 1989, and the Office takes

final action to grant the renewal on or after November 16, 1989, the registration

will be renewed for ten years.

All renewal terms run from the expiration date of the previous term.

Note Trademark Rule 2.186, 37 C.F.R. Section 2.186, regarding requirements related

to the establishment of ownership of the registration for the purpose of renewals

which permits a registrant to establish ownership either by recording an assignment

in the Assignments Branch of the Office or by submitting proof of the assignment

without recording.

11. Assignments

a. Content of Assignment Documents

Office policy governing trademark assignments provides that an assignment relating

to an application or registration will be recorded, even if the assignment document

itself does not identify the relevant application or registration numbers, provided

certain conditions are met. Specifically, the policy requires as follows with

respect to the identification of the properties assigned in such a case:

(i) The mark and the goods and services are identified in the assignment document

(or the assignment is of all registrations and/or applications owned by the

assignor), and the application or registration is identified by number and date in a

transmittal letter or attachment to the assignment document, in which case, such

letter or attachment shall become part of the record of the assignment; or

(ii) An assignment is executed concurrently with or subsequent to the filing of an

application but before its serial number and [p.55] filing date are ascertained, and

the application is identified by its date of execution, name of the applicant, mark

and goods or services.

b. Issuance of Registration in Current Owner's Name

Trademark Rule 2.187, 37 C.F.R. Section 2.187, has also been revised to clarify

office policy concerning issuance of registrations in the name of assignees or in a

new name of the applicant. The rule provides as follows:

The certificate of registration may be issued to the assignee of the applicant, or

in a new name of applicant, provided that the party makes a written request in the

application record, by the time the application is being prepared for issuance of

the certificate of registration, and an appropriate document is of record in the

Assignment Searh Room of the Patent and Trademark Office. If the assignment or name

change document is not of record in the Assignment Search Room, then the written

request must state that the document has been filed for recordation. The address of

the assignee must be made of record in the application file and in the recorded

document.

Trademark Rule 2.187, 37 C.F.R. Section 2.187.

Any application where such a request has been submitted should be forwarded to the

assigned examining attorney. The assigned examining attorney will ensure that the

assignment or change of name is entered in the file after recording and will then

return the application to processing.

If a party other than the applicant of record attempts to take any action in a

case, the examining attorney must confirm that the new party is the owner in

accordance with Trademark Rule 2.186, 37 C.F.R. Section 2.186. That is, the

applicant must provide the reel and frame number of an assignment, or the applicant

must submit other evidence of ownership.

c. Assignment Fees

Applicants should note that, effective April 17, 1989, the fee for recording

assignments of trademarks is $8.00 per application or registration assigned.

Trademark Rule 2.6, 37 C.F.R. Section 2.6. [p.56]

12. Establishing Ownership of Applications or Registrations

Trademark Rule 2.186, 37 C.F.R. Section 2.186, as amended, provides:

Any action with respect to an assigned application or registration which may or

must be taken by an applicant or registrant may be taken by the assignee provided

that the assignment has been recorded or that proof of the assignment has been

submitted.

The previous rule required recording of an assignment in a case where the

applicant/assignee or registrant/assignee was required to take an action, such as

filing a response to an Office action, filing an affidavit of use under Trademark

Act Section 8 or filing a renewal. While it may be advisable for an applicant or

registrant to record an assignment of an application or registration in view of the

provisions of Trademark Act Section 10, 15 U.S.C. Section 1060, concerning

subsequent purchasers, neither the Act nor the rules require recordation.

However, if the party taking the relevant action with respect to the application

or registration is different from the applicant or registrant of record and the

filing party has not recorded an assignment, the party taking the action must

establish that it is the owner of the application or registration through

appropriate evidence. This evidence may consist of a copy of a document transferring

ownership from one party to another or an explanation in an affidavit or supported

by a declaration under Trademark Rule 2.20, 37 C.F.R. Section 2.20, that a valid

transfer of legal title has occurred.

13. Revival of Abandoned Applications

Trademark Rule 2.66, 37 C.F.R. Section 2.66, concerning petitions to revive

abandoned applications, requires that all such petitions be filed "promptly." The

Office will continue to consider each petition on the merits according to the

circumstances of the case, but, as a general rule, all such petitions should be

filed within two months of the abandonment date. The standard for granting a

petition to revive continues to be "unavoidable delay," Please note the discussion

above (A. 10.) with specific reference to petitions to revive intent-to-use

applications.

14. Concurrent Use

The 1988 amendments insert the following language in Trademark Act Section 2(d),

15 U.S.C. Section 1052(d), governing concurrent use applications which are subject

to concurrent use proceedings in the Patent and Trademark Office: [p.57]

Use prior to the filing date of any pending application or a registration shall

not be required when the owner of such application or registration consents to the

grant of a concurrent registration to the applicant.

The statute now provides greater flexibility to applicants seeking concurrent use

registrations. Therefore, if the applicant is not entitled to a concurrent use

registration on the basis of the jurisdictional requirement of use of its mark prior

to the earliest filing date of any relevant pending application or registration, but

the relevant prior applicant or registrant has consented to the applicant's

concurrent use application, the examining attorney should approve the mark for

publication, subject to a concurrent use proceeding, provided it is otherwise

eligible.

Also, Trademark Rule 2.42, 37 C.F.R. Section 2.42, no longer requires that the

stated exceptions in a concurrent use application be inserted in the verification or

declaration. The exceptions need only be provided in the statement portion of the

application.

15. Requests to Divide an Application

Trademark Rule 2.87, 37 C.F.R. Section 2.87, establishes procedures for dividing

one application into two separate applications. The rule provides as follows:

(a) An application may be physically divided into two or more separate

applications upon submission by the applicant of a request therefor, in accordance

with paragraph (c) of this section. In the case of a request to divide out some, but

not all, of the goods or services in a class, a fee for each new separate

application to be created by the division must be submitted. Any outstanding time

period for action by the applicant in the original application at the time of the

division will be applicable to each new separate application created by the

division.

(b) A request to divide an application may be filed at any time between the filing

of the application and the date the Trademark Examining Attorney approves the mark

for publication or the date of expiration of the six-month response period after

issuance of a final action; or during an opposition, upon motion granted by the

Trademark Trial and Appeal Board. Additionally, a request to divide an application

under section 1(b) of the Act may be filed with a statement of use [p.58] under

section 2.88 or at any time between the filing of a statement of use and the date

the Trademark Examining Attorney approves the mark for registration or the date of

expiration of the six-month response period after issuance of a final action.

(c) A request to divide an application should be made in a separate paper from any

other amendment or response in the application. The title "Request to divide

application." should appear at the top of the first page of the paper.

By dividing the application, the applicant preserves the filing date, and thus the

potential constructive use date, as to all of the goods and services covered by the

application.

Under the rule, the applicant may request that certain goods or services in a

single class be divided, that is, that a separate application with the same filing

date be created to cover those goods or services. The applicant may also request

that an entire class or several classes be divided, that is, that one or more

separate applications with the same filing date be created to cover certain classes.

An applicant may request division of an application for any reason. For example,

in an intent-to-use application, the applicant may wish to proceed to publication or

registration with certain goods and services on or in connection with which it has

used the mark in commerce and retain an active application for any remaining goods

or services. The applicant can do so by requesting division of the application.

If the applicant requests that the goods or services in a single class be divided

into one or more separate applications, the applicant must submit an application fee

for each new application to be created. The fee is the same as the fee for the

filing of a new single-class application, $175.00. If an entire class is to be

divided out from a multiple class application, there is no fee. Trademark Rule

2.87(a), 37 C.F.R. Section 2.87(a). There is no fee for the request to divide

itself.

a. Processing Requests to Divide

Specially designated personnel in the ITU Unit will process all requests to

divide. All requests to divide will be given priority in processing over any other

paper in the case. All requests to divide should be forwarded to the ITU Unit

immediately for processing. However, if the application is the subject of a

proceeding before the Trademark Trial and Appeal Board, the request should first be

forwarded to the Board for appropriate action. The ITU Unit will process the request

as promptly as possible and will return the application or applications to [p.59]

regular processing after completing action on the request to divide.

If the request to divide does not include a necessary fee or is otherwise

deficient, the ITU Unit will notify the applicant of the deficiency. The applicant

must correct any such deficiency within thirty days or, if the division is a

necessary component of a statement of use, within the time permitted for filing the

statement of use, whichever is shorter. If the applicant fails to correct the

deficiency within the time provided, the request will be considered abandoned and

the application will be processed without regard to the request. The ITU Unit will

advise the applicant of any such action and will refund any fees paid in conjunction

with the request to divide.

If the applicant submits a request to divide along with a statement of use and a

request for an extension of time, and the fees are insufficient to cover all three,

the fees will be applied first to the request for an extension of time, second to

the statement of use and lastly to the request to divide.

If the applicant submits a request to divide along with a statement of use and a

request for an extension of time, and the fees are sufficient for the statement of

use only, and no time remains for filing additional fees, the applicant will be

given the opportunity to amend the statement of use to include all goods or services

in the application. The applicant must establish that the applicant used the mark in

commerce on or in connection with all such goods or services within the time

permitted for filing the statement of use. If time does remain in the existing

period for filing the statement of use, the applicant will be permitted to submit

the additional fees within that time period.

Filing a request to divide an application does not relieve an applicant of the

duty to respond to any outstanding Office action or to take any other required

action.

Likewise, the applicant should note that any outstanding time period for action by

the applicant in effect at the time the application is divided applies not only to

the original application, but also to each new application created in the division

of the application. Therefore, if a response to an Office action is due in a case,

the response is due likewise in each new application created through the division of

the application.

Similarly, if a statement of use is due, the period for filing the statement of

use relevant to the original application is likewise relevant to each new

application created through the division.

If a request to divide an application is received at any time other than those

specified, it will be returned to the applicant with any fees submitted for that

purpose and the application will not be divided. [p.60]

The Office will not consider a request to merge two separate applications into a

single application once again after a proper request to divide has been granted.

b. Division of Registration Not Permitted

A registration cannot be divided into one or more separate registrations.

16. Correspondence with Applicants Not Domiciled in the United States

Trademark Rule 2.18, 37 C.F.R. Section 2.18, has been revised to clarify Office

policy with respect to correspondence with applicants not domiciled in the United

States. In such a case, the Office will send correspondence to the applicant's

domestic representative unless the applicant has authorized an attorney or another

qualified person to prosecute the application. If the applicant has authorized an

attorney or other qualified person to prosecute the application, the Office will

send correspondence to that authorized person.

17. Preferred Size for Application Papers

Trademark Rule 2.31, 37 C.F.R. Section 2.31, now specifies that the preferred size

for application papers is letter size. This policy applies to all submissions

related to all applications.

C. Provisions Affecting Applications under Section 44 of the Act

The 1988 amendments introduce relatively few changes affecting applications filed

under Trademark Act Section 44, 15 U.S.C. Section 1126. The amended Rules of

Practice incorporate changes dictated by decisions in the area and clarify Office

policy related to the administration of Section 44 in other respects. The provisions

are summarized in this section.

1. Filing-Date Requirements

As noted above ( A.1.a.), the amended Rules of Practice institute a number of

changes related to receipt of a filing date which affect all applications. This

section addresses only those changes which relate specifically to applications under

Section 44. Trademark Rule 2.21, 37 C.F.R. Section 2.21, sets forth the minimum

formal requirements to receive a filing date for the various types of applications.

These minimum requirements do not [p.61] include all of the requirements which may

apply to qualify for registration.

a. Statement of a Bona Fide Intention to Use the Mark in Commerce

The 1988 amendments require all applicants under Section 44 of the Act to allege a

bona fide intention to use the mark in commerce, although use in commerce is not

required as a condition to registration. Any application under either Section 44 (d)

or 44(e) of the Act must include such a statement to receive a filing date.

Trademark rule 2.21(a)(5)(ii) and (iii), 37 C.F.R. Section 2.21(a)(5)(ii) and (iii).

The Office will not presume that an application under Section 44 is also based on

intent to use under Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). If the

applicant wishes to assert both bases, the applicant must indicate so specifically.

If the applicant indicates that Section 44 is the basis, and nothing more, and the

applicant fails to comply with the relevant Section 44 filing-date requirements, the

applicant will be denied a filing date, even if the application includes a statement

of a bona fide intention to use the mark in commerce.

b. Priority Claim or Certified Copy of a Foreign Registration

In the case of an application claiming the benefits of Section 44(d), the

application must be filed in the U.S. within six months of the relevant foreign

filing and must include a claim of the benefit of a prior foreign application to

receive a filing date. Trademark Rule 2.21(a)(5)(iii), 37 C.F.R. Section

2.21(a)(5)(iii). Trademark Rule 2.39, 37 C.F.R. Section 2.39, sets forth the

required content of such a claim, essentially, the filing date and country of the

first regularly filed foreign application. The applicant should also indicate the

serial number of that application, if it is available. The serial number is not

required to receive a filing date, however.

In the case of an application under Section 44(e), the application must include a

certification or certified copy of the foreign registration on which the United

States application is based to receive a filing date. Trademark Rule 2.21(a)(5)(ii),

37 C.F.R. Section 2.21(a)(5)(ii). If the applicant submits any type of copy other

than an original of a certified copy, the Office will not grant a filing date.

2. Statement of Dates of Use and Method of Use and Specimens Not Reguired

In any application under Section 44, the applicant need not state a date of first

use anywhere, nor a date of first use in commerce, nor the method of use. Also, the

applicant need not provide specimens of use. Crocker National Bank v. Canadian

Imperial Bank of Commerce, 223 USPQ 909 (TTAB 1984). [p.62] Trademark Rules 2.21 and

2.33, 37 C.F.R Sections 2.21 and 2.33, have been amended to reflect this change. In

such a case, the mark need not be in use anywhere for the purposes of the U.S.

application.

3. The Basis for Registration in Applications Claiming the Benefits of Section

44(d)

In In re Daiwa Seiko, Inc., 230 USPQ 794 (Comm'r Pats. 1983), the Commissioner

clarified the distinction between Sections 44(d) and (e) of the Act. The

Commissioner held that Section 44(d) only provides a basis for receiving a priority

filing date but does not provide a basis for registration. Therefore, an application

claiming the benefit of a foreign application under Section 44(d) must include a

basis for registration also. In most cases, the basis for registration will be the

foreign registration which will issue from the foreign application relied upon for

priority. The Office will presume that this is the basis for registration in any

application under Section 44(d) unless the applicant indicates otherwise.

Furthermore, the assertion of a different basis for registration more than six

months after the filing of the foreign application, including reliance on a

different foreign registration under Section 44(e), will result in the loss of the

priority filing date under Section 44(d) of the Act. In such a case, the Office will

change the filing date in the United States to the date on which the applicant

perfects the new basis for registration by providing either a proper statement of

dates of use in commerce, a proper assertion of an intent to use in commerce under

Section 1(b) of the Act or a certificate or certified copy of a foreign

registration. See TMEP section 706 and Chapter 1000.

In an application filed under Section 44 before November 16, 1989, the applicant

may amend to add Section 1(b) as a basis for registration on or after that date.

However, if the applicant has claimed priority under Section 44(d) in such a case,

and the applicant drops the original basis for registration to rely on Section 1(b)

only, the applicant may not retain the priority date unless the amendment asserting

Section 1(b) as a basis for registration was made within six months of the filing of

the foreign application relied on for priority. If the amendment was made later and

the applicant drops the original basis for registration, the effective filing date

of the application is the date of the amendment to assert Section 1(b) as a basis

for registration.

D. Provisions Affecting Applications Based on Use in Commerce Only [p.63]

The 1988 amendments and the amended Rules of Practice do not provide any changes,

as such, related specifically to applications based on use in commerce under

Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), other than those noted above

(Section B) affecting all applications. In one instance, noted here, the amended

Rules of Practice merely set forth long-standing Office policy in the rules for the

first time.

Trademark Rule 2.59(a), 37 C.F.R. Section 2.59(a), provides as follows:

In an application under section 1(a) of the Act, the applicant may submit

substitute specimens of the mark as used on or in connection with the goods, or in

the sale or advertising of the services, provided that any substitute specimens

submitted are supported by applicant's affidavit or declaration in accordance with

Section 2.20 (37 C.F.R. Section 2.20) verifying that the substitute specimens were

in use in commerce at least as early as the filing date of the application. The

verification requirement shall not apply if the specimens are duplicates or

facsimiles, such as photographs, of specimens already of record in the application.

As noted, this provision merely states long-standing policy in the regulations for

the first time.

E. Filing on More Than One Basis and Changing the Basis of the Application

Trademark Rule 2.33(d), 37 C.F.R. Section 2.33(d), precludes the filing of an

application based on both use in commerce under Trademark Act Section 1(a), 15

U.S.C. Section 1051(a), and a bona fide intention to use the mark in commerce under

Trademark Act Section 1(b), 15 U.S.C. Section 1051(b). This prohibition precludes

applications in a single class alleging both use in commerce and intent to use as to

either the same goods and services or different goods or services. Likewise, the

prohibition precludes applications in more than one class alleging both use in

commerce and intent to use. If an applicant submits an application asserting both

Section 1(a) and 1(b) bases for registration, [p.64] the Office will not grant a

filing date and will return the papers to the applicant.

The rule also precludes amendments in applications initially based on use in

commerce under Section 1(a) to change the basis to intent to use under Section 1(b).

In an application under Section 1(b) of the Act, an applicant may assert dates of

first use which are earlier than the filing date of the application in an amendment

to allege use or a statement of use.

Applicants may allege Section 44 as an additional basis for registration in

conjunction with either use in commerce under Section 1(a) or intent to use under

Section 1(b). In such a case, an applicant may also allege different bases for the

application as to specific goods or services within a class. If an applicant asserts

more than one basis for registration, the applicant must satisfy all of the

requirements for registration which apply to each basis asserted. The applicant must

indicate clearly that it asserts two bases for registration.

If an applicant asserts both intent to use and Section 44(e) as the bases for

registration, the Office will not approve the mark for publication until the

applicant submits a certificate or certified copy of the foreign registration.

In an application filed under Section 44 before November 16, 1989, the applicant

may amend to add Section 1(b) as a basis for registration on or after that date.

However, if the applicant has claimed priority under Section 44(d) in such a case,

and the applicant drops the original basis for registration to rely on Section 1(b)

only, the applicant may not retain the priority date unless the amendment asserting

Section 1(b) as a basis for registration was made within six months of the filing of

the foreign application relied on for priority. If the amendment was made later and

the applicant drops the original basis for registration, the effective filing date

of the application is the date of the amendment to assert Section 1(b) as a basis

for registration.

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