Chapter 1100

Intent-to-Use Applications and Requests to Divide

1101 Bona Fide Intention To Use the Mark In Commerce

1102 Initial Examination of Intent-to-Use Applications

1102.01 Substantive Refusals

1102.02 Drawings

1102.03 Intent-to-Use Applications and the Supplemental Register

1102.04 Claims of Acquired Distinctiveness under §2(f)

1103 Allegations of Use

1104 Amendment to Allege Use Under §1(c) of the Act

1104.01 Minimum Filing Requirements for an Amendment to Allege Use

1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements

1104.01(b) Processing an Amendment to Allege Use That Does Not Meet Minimum Filing Requirements

1104.01(c) Processing Defective Amendment to Allege Use Filed With Other Amendments

1104.02 Form of Amendment to Allege Use

1104.03 Time for Filing Amendment to Allege Use

1104.03(a) Use on All Goods/Services Required Before Filing

1104.03(b) The “Blackout Period”

1104.03(c) Processing Amendment to Allege Use Filed During the Blackout Period

1104.04 Processing Timely Amendment to Allege Use Located After Publication

1104.05 Amendment to Allege Use Filed in Conjunction With Application

1104.06 Processing Amendment to Allege Use Received Before Application is Assigned to an Examining Attorney

1104.07 Amendments to Allege Use and Ex Parte Appeals

1104.08 Requirements for a Complete Amendment to Allege Use

1104.09 Examination of Amendment to Allege Use by Examining Attorney

1104.09(a) Ownership

1104.09(b) Verification and Date of Execution

1104.09(c) Identification of Goods/Services

1104.09(d) Use in Commerce and Dates of Use

1104.09(e) Specimen

1104.09(f) Drawing

1104.09(g) Fees

1104.09(h) Issuance of Actions by Examining Attorney Related to the Amendment to Allege Use

1104.10 Amendment and Withdrawal of Amendment to Allege Use

1104.11 Approval of Amendment to Allege Use After Examination

1105 Publication of Intent-to-Use Applications for Opposition

1106 Notice of Allowance

1106.01 Issuance of the Notice of Allowance

1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance

1106.03 Cancellation of Notice of Allowance

1106.04 Correction of Errors in Notice of Allowance

1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use

1107.01 Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is Filed

1108 Requests for Extensions of Time to File the Statement of Use

1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use

1108.02 Requirements for Request for an Extension of Time to File a Statement of Use

1108.02(a) Ownership

1108.02(b) Verification

1108.02(c) Filing Fees

1108.02(d) Identification of Goods/Services

1108.02(e) Bona Fide Intention to Use the Mark in Commerce

1108.02(f) Good Cause Required for Extensions Beyond the First Six-Month Extension

1108.03 Only One Extension Request May Be Filed With or After a Statement of Use

1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney

1108.04 Recourse After Denial of Extension Request

1108.05 Petitions From Denial of Request For An Extension of Time to File a Statement of Use

1109 Statement of Use Under §1(d) of the Trademark Act

1109.01 Minimum Filing Requirements for a Statement of Use

1109.02 Review for Compliance with Minimum Filing Requirements

1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements

1109.03 Use on All Goods/Services Required Before Filing

1109.04 Time for Filing Statement of Use

1109.05 Form of Statement of Use

1109.06 Requirements For a Complete Statement of Use

1109.07 Examination of the Statement of Use — In General

1109.08 Examination of the Statement of Use – New Requirements and Refusals

1109.09 Use in Commerce

1109.09(a) Dates of Use

1109.09(b) Specimens

1109.10 Ownership

1109.11 Verification and Execution

1109.11(a) Authority of Signatory

1109.11(b) Verification of Essential Elements

1109.11(c) Date of Execution

1109.11(d) Signature of Electronically Transmitted Statement of Use

1109.12 Drawing

1109.13 Identification of Goods/Services in Statement of Use

1109.14 Classification

1109.15 Filing Fees

1109.15(a) Processing Deficient Fees

1109.16 Correcting Defects in Statement of Use

1109.16(a) Statutory Requirements That Must Be Met Within Statutory Filing Period

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

1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements

1109.16(d) Response to Office Action Required Within Six Months of Issuance Date Regardless of Expiration Date of Period for Filing the Statement of Use

1109.16(e) Applicant’s Recourse After Refusal of Registration

1109.17 Withdrawal of the Statement of Use Prohibited

1109.18 Approval of the Statement of Use

1110 Request to Divide an Application

1110.01 Application May be Divided

1110.02 Fees for Filing Request to Divide

1110.03 Time for Filing Request to Divide

1110.04 Form and Processing of Request to Divide

1110.05 Outstanding Time Periods Apply to Newly Created Applications

1110.06 Signature of Request to Divide

1110.07 Dividing an Application When Statement of Use is Due

1110.08 Dividing an Application When Response to Office Action is Due

1110.09 Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board

1110.10 Dividing a §44 Application

1110.11 Dividing a §66(a) Application

1110.11(a) Dividing a §66(a) Application After Change of Ownership With Respect to Some But Not All of the Goods/Services

1110.12 Division of Registrations