Payment of the filing fee for at least a single class within the statutory time for filing the statement of use is a minimum filing requirement. See 37 C.F.R. §2.88(b)(3), (e)(i); In re L.R. Sport Inc., 25 USPQ2d 1533 (Comm’r Pats. 1992).
In a multiple-class application, TEAS will require payment of the fees for all classes under an intent-to-use basis under Trademark Act §1(b) prior to issuance of the notice of allowance when the applicant files a statement of use.
Permitted paper filings. If a statement of use for a multiple-class application is permitted to be filed on paper (see TMEP §301.02) and includes the fee for only one class of goods/services, the ITU staff will issue an Office action granting the applicant 30 days in which to submit the missing fees to cover all classes or specify the class(es) to be abandoned. The additional fees may be paid after the time for filing the statement of use has expired, within the period for response to the Office action. If the applicant does not submit the fees or specify the classes to be abandoned within the set time period, the USPTO will apply the fees paid to the lowest-numbered class(es) in ascending order, and will delete the goods/services in the higher-numbered class(es) from the application. 37 C.F.R. §2.88(b)(3).
If an applicant files a statement of use and a request to divide the application at the same time, and the fees submitted are sufficient for one but not both, the fees will be applied first to the statement of use, and the applicant will be notified of the deficiency. See TMEP §1110.02 and §1110.07 for further information about filing fees for requests to divide.
If the applicant files an "insurance" extension request in conjunction with a statement of use (see TMEP §1108.03), and the applicant submits fees sufficient for one but not both, the USPTO will apply the fees as follows: (1) if there is enough money to cover the extension request, the USPTO will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the USPTO will apply the fees to the statement of use.
See TMEP §1109.15(a) regarding processing deficient fees.
If the filing fee for at least a single class is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid for a permitted paper filing (see TMEP §301.02), the fee for at least one class of goods/services must be repaid before the expiration of the statutory filing period, or the application will be abandoned.
If a check is returned unpaid or an EFT or credit card payment is refused or charged back, and the statement of use was accompanied by an authorization to charge deficient fee(s) to a deposit account (37 C.F.R. §2.208) that has sufficient funds to cover the fee, the USPTO will charge the filing fee for the statement of use and the fee for processing the returned check or refused payment (37 C.F.R. §2.6(b)(10) ) to the deposit account.
If the examining attorney determines, before taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, the examining attorney should email the ITU/Divisional Unit and request that the SOU Processing Complete status be withdrawn and that the ITU staff notify the applicant in writing of the defect. See TMEP §1109.15.
If the examining attorney determines, after taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, and there is time remaining in the statutory period for filing the statement of use, the examining attorney will issue an Office action refusing registration on the ground that the filing fee for the statement of use was not paid and will require the applicant to submit the filing fee on or before the statutory deadline. If the fee was not paid because a check was returned unpaid for a permitted paper filing, or an EFT or credit card was refused or charged back, the examining attorney will also require submission of the processing fee required by 37 C.F.R. §2.6(b)(10). The processing fee may be paid after expiration of the statutory deadline for filing the statement of use.
If the fee for at least a single class has not been paid, and there is no time remaining in the statutory period for filing the statement of use, the examining attorney will issue an Office action refusing registration and stating that the application is abandoned because a proper statement of use was not filed within the time required by statute. 37 C.F.R. §2.88(e)(1), (h). In such a case, the examining attorney must issue a regular Office action, with a three-month response clause. See TMEP §705.08. If the applicant does not establish within the response period that the fee for at least a single class of goods/services was paid prior to the expiration of the statutory filing period, the application will be abandoned.
If the fee for at least a single class is paid before expiration of the statutory deadline, but the fee(s) for additional class(es) are deficient, the examining attorney will issue an Office action requiring the applicant to submit the missing fees to cover all class(es) or specify the class(es) to be abandoned. The additional fees may be paid after the time for filing the statement of use has expired, within the time period for responding to the examining attorney’s Office action. If the applicant does not submit the fees or specify the classes to be abandoned within the set time period, the USPTO will apply the fees paid to the lowest-numbered class(es) in ascending order, and will delete the goods/services in the higher-numbered class(es) from the application. 37 C.F.R. §2.88(b)(3).
If the statement of use has been approved and the mark is registered when the USPTO learns that the fee for the statement of use was deficient, the USPTO will cancel the registration as inadvertently issued, because the statutory requirements for registration have not been met. If the fee for at least a single class of goods/services was not paid before the expiration of the statutory filing period, the application will be abandoned. If the fee for at least a single class of goods/services was timely paid, but the fees for additional class(es) have not been paid, the USPTO will restore the application to pendency and refer it to the examining attorney for appropriate action.
See TMEP §405.06 regarding payments that are refused.
The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b) ) before the expiration of the deadline for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). Other defects may be cured after the expiration of the statutory filing period, within the period for response to the Office action notifying the applicant of the defect. See TMEP §1109.16(a) regarding defects that must be cured before the expiration of the statutory filing period.
The applicant must comply with the statutory requirements for filing a statement of use (37 C.F.R. §2.88(b) ) before expiration of the period for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use). Thus, the following deficiencies must be cured before expiration of the statutory filing period:
The examining attorney must refuse registration on the same grounds if the applicant attempts to amend the dates of use to state a date of first use in commerce that is later than the time permitted for filing the statement of use. 37 C.F.R. §2.71(c)(2); TMEP §1109.09(a).
When refusing registration on the above grounds, the examining attorney must issue a regular Office action with a three-month response clause. See TMEP §705.08. This gives the applicant three months, or up to six months if applicant is granted an extension of time to respond to the Office action, to establish that it met the statutory requirements on or before the expiration of the time for filing the statement of use. See TMEP §1109.16(b). See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.
When the examining attorney determines that the applicant did not meet the statutory requirements within the period for filing the statement of use, the examining attorney must issue an Office action refusing registration on the ground that the applicant did not file a statement of use that meets the requirements of 15 U.S.C. §1051(d)(1). If there is time remaining in the statutory filing period, the Office action should state that the deficiency must be cured before the expiration of the deadline for filing the statement of use.
If there is no time remaining in the statutory filing period, the examining attorney must issue an Office action with a three-month response clause (see TMEP §705.08), stating that the application will be abandoned for failure to timely file a statement of use that meets the requirements of §1(d)(1) of the Act. Even though the statutory filing period has expired, the Office action must include a three-month response clause. This gives the applicant three months, or up to six months if applicant is granted an extension of time to respond to the Office action, to establish that it met the statutory requirements on or before the expiration of the time for filing the statement of use. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.
If the applicant fails to respond to the Office action, the application will be abandoned for failure to respond. If the applicant responds to the Office action, but does not establish that the requirements for filing a statement of use had been satisfied as of the expiration of the deadline for filing the statement of use, the examining attorney will make the refusal of registration final. If the applicant does not respond, the application will be abandoned for failure to respond to the final refusal.
See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that the applicant did not comply with the statutory requirements for filing the statement of use within the statutory filing period.
In limited circumstances, an applicant may file a request for an extension of time to file a statement of use after filing a statement of use, in order to gain more time to comply with the statutory requirements for filing the statement of use (sometimes called an "insurance" extension request). An applicant may file an extension request after filing a statement of use only if: (1) there is time remaining in the existing six-month period in which the statement of use was filed; (2) no extension request was filed together with the statement of use; and (3) granting the extension would not extend the time for filing the statement of use more than thirty-six months beyond the issuance of the notice of allowance. 37 C.F.R. §2.89(e)(1). See TMEP §1108.03 regarding the time periods and requirements for filing an "insurance" extension request, and §1108.03(a) regarding the procedures for processing such a request.
The filing of an "insurance" extension request is not in itself a proper response to an Office action, and does not extend the period for response to the Office action. See TMEP §1109.16(d).
Example: Assume that a notice of allowance issues November 3, 2022, the applicant files a statement of use on November 22, 2022, and the examining attorney issues an Office action requiring substitute specimens on December 16, 2022. The applicant may file an "insurance" extension request on or before May 3, 2023, which would give the applicant until November 3, 2023 to make proper use of the mark. However, the applicant must file a response to the Office action, or a request for an extension of time to respond, on or before March 16, 2023. See TMEP §711.01 for information about filing a request for an extension of time to respond and §1109.16(d) for information about responding to an Office action in this situation.
In limited circumstances, when the applicant files a timely "insurance" extension request in conjunction with or after filing a statement of use (see TMEP §§1108.03–1108.03(a), 1109.16(c)) and the examining attorney has issued an Office action, the period for response to the Office action will expire before the statutory deadline for filing the statement of use. To avoid abandonment, the applicant must respond within three months of the issuance date of the Office action or, if applicant is granted an extension of time to respond to the Office action, within six months of the issuance date of the Office action, regardless of the expiration date of the time for filing the statement of use. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.
If the time for filing the statement of use expires after the time for responding to a nonfinal Office action, and the applicant believes that it can cure a deficiency raised in the Office action before expiration of the time for filing the statement of use, the applicant should timely respond to the Office action, stating in the response that it intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period.
If the applicant files such a response, the examining attorney must not suspend the application. Instead, the examining attorney must make final any outstanding refusal or requirement. The applicant will then have three months from the issuance date of the final Office action or, if applicant is granted an extension of time to respond to the Office action, six months from the issuance date of the Office action, to cure statutory deficiencies. Of course, applicant still must comply with the statutory requirements for filing the statement of use before the expiration date of the deadline for filing the statement of use.
Example: If the deadline for filing the statement of use expires on February 3, 2023, and the examining attorney issues a final Office action requiring substitute specimens on January 5, 2023, the applicant has until April 5, 2023 (or until July 5, 2023 if applicant is granted an extension of time to respond to the Office action (see TMEP §711.01)) to file the substitute specimens, but the applicant must verify that the specimens were in use in commerce on or before February 3, 2023.
If the applicant files a proper and timely response to the final Office action, and complies with the statutory requirements for filing the statement of use before the expiration of the period for filing the statement of use, the examining attorney will withdraw the refusal based on non-compliance with the statutory requirements for filing the statement of use.
If the time for filing the statement of use expires after the time for responding to a final Office action, and the applicant can overcome any grounds for refusal or comply with any requirement raised in the final action before expiration of the time for filing the statement of use, but not within the time for responding to the final Office action, the applicant must still file a timely response to the Office action. The response must state that the applicant intends to comply with the statutory requirements for filing the statement of use on or before the expiration of the statutory filing period and request suspension of the application. The examining attorney will then suspend the application for only the amount of time remaining in the statutory period for filing the statement of use. The applicant will then have until the end of the extension period for the statement of use to overcome any grounds for refusal or comply with any requirement.
Example: The notice of allowance issues on September 22, 2022 and a statement of use and/or extension of time to file a statement of use is due on or before March 22, 2023. The applicant files a statement of use on November 15, 2022. On December 5, 2022, the examining attorney issues an Office action regarding the acceptability of the specimen and the applicant responds on December 8, 2022 but does not correct the specimen deficiency. The examining attorney then issues a final Office action on December 29, 2022 regarding the specimen issue. If the applicant files a timely "insurance" extension request on or before March 22, 2023, this would extend the time to perfect the statement of use to September 22, 2023. However, the applicant must still respond to the final Office action by March 29, 2023 (or by June 29, 2023 if applicant is granted an extension of time to respond to the final Office action (see TMEP §711.01)) . The response must include a request to suspend the application or the application will be abandoned for failure to respond. The examining attorney would then suspend the application until September 22, 2023, which is the date of expiration of the extension period and the deadline for complying with the statutory requirements for a statement of use.
If the applicant files a response to the final Office action prior to the expiration of the statutory period for filing a statement of use, and the response overcomes the grounds for refusal and/or complies with any requirement, the examining attorney will remove the application from suspension and withdraw the refusal.
If the applicant files a response to the final Office action prior to expiration of the statutory period for filing the statement of use, but the response does not overcome the grounds for refusal and/or comply with any requirement, the examining attorney must issue a "Subsequent Final Action," thereby reissuing the final refusal, and the applicant will have three months to respond, with an option for applicant to extend the deadline by requesting one three-month extension of the time to respond. See TMEP §716.06. See TMEP §711.01 regarding requests for an extension of time to respond to an Office action with a three-month response period.
If the applicant unintentionally fails to meet the minimum requirements for filing a statement of use within the time permitted, as set forth in 37 C.F.R. §2.88(e) (see TMEP §1109.01), the applicant may file a petition to revive within the deadlines specified in 37 C.F.R. §2.66(a). However, if the applicant met the minimum filing requirements of 37 C.F.R. §2.88(e), but the examining attorney refuses registration on the ground that the applicant failed to satisfy the statutory requirements for a complete statement of use on or before the statutory deadline (e.g., because the specimen is unacceptable or the dates of use are subsequent to the deadline for filing the statement of use), the applicant cannot overcome the refusal by filing a petition to revive under 37 C.F.R. §2.66. TMEP §1714.01(f)(ii)(B). The applicant’s only recourse is to appeal the examining attorney’s refusal of registration to the Trademark Trial and Appeal Board.
See 37 C.F.R. §2.88(b) and TMEP §1109.16(a) regarding the statutory requirements that must be met within the statutory period for filing the statement of use (i.e., within six months of the issuance date of the notice of allowance or before the expiration of an extension of time for filing a statement of use).
Once an applicant has filed a statement of use, the applicant may not withdraw the statement of use, even if the USPTO determines that the statement of use does not comply with the minimum filing requirements. 37 C.F.R. §2.88(g); In re Informix Software, Inc., 32 USPQ2d 1861 (Comm’r Pats. 1993). Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed.
See TMEP §1109.16(e) regarding the applicant’s recourse after an examining attorney’s refusal of registration on the ground that applicant did not meet the statutory requirements for filing a statement of use before the expiration of the statutory deadline.
Approval of the statement of use indicates that the mark is eligible for registration. If the examining attorney determines that the application is in condition for registration, the examining attorney will approve the mark for registration under §1(d) of the Trademark Act, 15 U.S.C. §1051(d). Before approving the mark for registration, the examining attorney must ensure that the information contained in the record is accurate, that all amendments filed by the applicant have been examined, that material that should be published in the Trademark Official Gazette and included on the registration certificate has been properly entered into the Trademark database, and that material that should not be published has been deleted from the Trademark database. See TMEP §817 regarding preparation of an application for publication or registration. If an assignment has been recorded, the examining attorney should ensure that the ownership information in the Trademark database is updated to reflect the true owner of record. See TMEP §502.02(c). The examining attorney must also perform the appropriate transaction to ensure that the notice of approval of the statement of use is issued.
If the applicant filed an amendment to the Supplemental Register with or after filing a statement of use, and the application is otherwise in condition to be approved for registration, the examining attorney must approve the statement of use and approve the application for registration on the Supplemental Register. See TMEP §1102.03 regarding the examination of intent-to-use applications for registration on the Supplemental Register.
Under 37 C.F.R. §2.87(a), an applicant may divide the application into two or more separate applications upon payment of the applicable fees. When dividing an application, the applicant preserves the filing date for all the goods/services covered by the application. See 37 C.F.R. §2.87(b) and TMEP §1110.02 regarding the fees for a request to divide.
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 the goods/services on or in connection with which the applicant has used the mark in commerce and retain an active intent-to-use application for any remaining goods/services.
The applicant must file a request to divide if the applicant files an amendment to allege use before making use on all the goods/services for which applicant seeks registration under §1(b), or a statement of use before making use on all the goods/services specified in the notice of allowance for which applicant seeks registration. 37 C.F.R. §§2.76(c), 2.88(c); TMEP §§1104.03(a), 1109.03.
Request to Divide Out One or More Entire Classes. With a request to divide out one or more entire classes from an application, only the fee for dividing the application (divisional fee), as set forth in 37 C.F.R. §2.6(a)(19), is required. 37 C.F.R. §2.87(b). A divisional fee is required for each new (child) application created by the division of the original (parent) application. No separate application filing fee is required for any new applications created.
Request to Divide Out Some, But Not All, of the Goods/Services in a Single Class. A request to divide out some, but not all, of the goods/services in a single class must be accompanied by both: (1) the divisional fee for each new (child) application created by the division of the original (parent) application (37 C.F.R. §2.6(a)(19) ); and (2) an application filing fee for each new separate application created by the division, as set forth in 37 C.F.R. §2.6(a)(1). 37 C.F.R. §2.87(b). The amount of the new application filing fee depends on the method used to file the original application and request to divide, and the filing fee in effect at the time of the request to divide, as follows:
The current fee schedule is available on the USPTO website at https://www.uspto.gov .
If the request to divide does not include the required fee(s), the ITU/Divisional Unit will notify the applicant in writing of the deficiency and grant the applicant time to submit the required fees. The applicant must submit the fee(s) within the time permitted, or the request to divide will be considered abandoned and the application will not be divided. If the applicant does not submit the necessary fees, the ITU/Divisional Unit will notify the applicant that the request to divide is considered abandoned.
See TMEP §1110.07 regarding the application of fees when an applicant files a request to divide in conjunction with a statement of use and/or request for an extension of time to file a statement of use, but submits insufficient fees.
An applicant may file a request to divide at any time between the filing of the application and the date the examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board. 37 C.F.R. §2.87(c)(1).
A request to divide a §1(b) application may also be filed with a statement of use, or at any time between the filing of a statement of use and the date the examining attorney approves the mark for registration. 37 C.F.R. §2.87(c)(2).
In a multiple-basis application, a request to divide out goods/services having a particular basis may also be filed during the period between the issuance of the notice of allowance and the filing of the statement of use. 37 C.F.R. §2.87(c)(3).
If the USPTO receives a request to divide at any other time, the USPTO will deny the request, and refund any fees submitted with the request.
Applicants must file a request to divide through the Trademark Electronic Application System (TEAS) at https://teas.uspto.gov, unless an exception to the requirement to file electronically applies. See 37 C.F.R. §2.23(a); TMEP §301.01. See TMEP §301.02 regarding the limited exceptions for paper submissions.
In TEAS, the applicant may file a request to divide directly as part of the TEAS "Allegation of Use" form, but only when the request to divide is limited to the creation of only one child application. If the applicant wishes to create more than one child application, or if the request to divide is being made in a context other than an "Allegation of Use" scenario, the applicant can still file electronically by doing the following: (1) choose the "Miscellaneous Forms" offering within TEAS, and (2) select therein the "Request to Divide Application" choice from the list of forms. A "Request to Divide Registration" offering is also available in the "Registration Maintenance/Renewal/Correction Forms" category.
All requests to divide must be immediately referred to the ITU/Divisional Unit for processing, unless the application is the subject of a proceeding before the Trademark Trial and Appeal Board. See TMEP §1110.09 regarding requests to divide applications that are the subject of a proceeding at the Board.
In pending applications in which a request to divide is filed, the ITU/Divisional Unit will process the request to divide and ensure that the USPTO records reflect current ownership information. Because the assignment records of the parent application do not appear in the newly created child application, the ITU staff will place a copy of the Trademark Assignment Abstract of Title for the parent application in the trademark records of the child application. The abstract will be viewable via the Trademark Image Capture Retrieval System (TICRS) and the Trademark Status and Document Retrieval (TSDR) portal on the USPTO website. The assignment information in the parent application will remain accessible via the assignment database on the USPTO website. After the request to divide is processed and the child application is created, any new recordations in the child application will appear in the assignment database. See TMEP §501.06 regarding partial assignments.
Permitted paper filings. A permitted paper request to divide should be made in a separate document 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 document. 37 C.F.R §2.87(d).
Any outstanding deadline in effect at the time an application is divided applies not only to the original application, but also to each separate new application created by the division of the application, except in the following circumstances:
