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Tag: intent to use

Filing an Amendment to a Trademark Application After Issuance of a Notice of Allowance but Before Submission of a Statement of Use

Trademark applications which are filed on an intent-to-use basis always present slight risks since the application is filed before the owner has begun using the trademark and before the owner knows 100% how the trademark will be used. There is always the possibility that the trademark will be changed somehow when the mark is actually used.

Generally, once a trademark application is filed, only limited changes can be made to the application, such as removing goods or services, amending the mark description, very minor changes to the mark itself, changing the attorney, some changes to the owner identification. These changes become more difficult to make the longer the application processes. Usually, the changes are most easily made before examination occurs (typically in the first 3-4 months). Once examination has begun, Examiners will often be more reluctant to approve changes. Of course, some changes may be necessitated by issues raised in an Office Action from the Examiner. After examination, most marks are scheduled for publication. Any changes should really tried to be made before publication, because once the trademark application is published, the application can only be changed on very limited grounds. Some changes cannot be made at all. Some changes require a petition to the Director.

Once publication ends, and a Notice of Allowance has issued in an intent-to-use trademark application, changes become even more limited. Generally, the only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods or services, or the entire description of the nature of the collective membership organization, from the identification; (2) the deletion of a basis in a multiple-basis application; and (3) changes of attorney and changes of address. The Trademark Office will enter other amendments during this period, but only with the express permission of the Director. This requires filing a petition laying out facts and reasons for the change, as well as payment of the petition fee. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review.

Trademark Specimens

Except in a few cases*, a trademark will not be registered until the mark has been used.  The Trademark Office won’t register a trademark unless the applicant provides proof of how the mark is used in commerce.  This is a reflection of trademark law, which focuses on the fundamental concept that trademark rights arise out of trademark use, because rights are associated with the public’s recognition of a mark – once a mark is used in public, the public has an interest in not being confused by others’ use of similar marks.

In a Section 1(a) trademark application, the applicant must include proof of how the mark is being used in commerce at the time of the filing, because the 1(a) filing basis signifies that the mark is currently being used.  In contrast, with a Section 1(b) trademark application, the applicant can provide proof of use of the mark at some time after the application is filed, as long as, at the time of filing, the applicant had an intent to use the mark in the future.  There are reasons a person might want to file a 1(b) application instead of waiting to use the mark, and there are reasons a person might want to wait until beginning use to file a trademark application.

Use of the mark has to be shown in a particular way.  It has to be use that demonstrates the mark is being used in commerce.  Mere advertising for goods is not enough.  Letterhead, business cards, invoives, etc. typically aren’t enough.  And now, the TTAB has stated that a YouTube video is not enough.  As reported over at the TTABlog, without including in the specimen a means for downloading or ordering the goods or services offered over YouTube or other similar web outlets, use is not established:

We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant’s specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof.   In re Rogowski, Serial No. 77083475 (December 11, 2012).

So, care must be taken when submitting proof of use of the mark.  An improper specimen can jeopardize an application, though some actions can be taken to salvage it.  The best practice is to submit a good specimen showing clear use, especially when the use is unquestionable.

* Trademark applications based on foreign registrations do not require proof of use to be registrable.  This article will only discuss applications asserting a domestic basis.  More on foreign trademark bases here.