following approval for publication. During the blackout period, an amendment to allege use may no longer be filed. See TMEP §1105.05. If, upon publication, such an application is not opposed or the applicant prevails in all oppositions filed, the Office will issue a notice of allowance. Upon issuance of the notice of allowance, the application is no longer in the blackout period. While the applicant may not file a statement of use before issuance of the notice of allowance, the applicant must file a statement of use or request for extension of time to file a statement of use within six months of issuance of the notice of allowance. Thus, neither an amendment to allege use nor a statement of use may be filed after approval for publication and before issuance of the notice of allowance, the interval referred to as the blackout period. See TMEP $1105.05(a)(i)(B) as to preventing the onset of the blackout period. 408 Published for Opposition A "published" application is a Principal Register application for which the mark is published for opposition in the Trademark Official Gazette. Unless such an application is withdrawn or abandoned, it is referred to as a published application from the date of publication of the mark in the Official Gazette until the Office issues either a certificate of registration or a notice of allowance, as appropriate. Regarding jurisdiction of the examining attorney over an application, see 37 C.F.R. §2.84; TMEP $1504 et seq. Regarding opposition proceedings before the Trademark Trial and Appeal Board, see TMEP §1503 et seq. The files of applications containing published marks are located in the Publication and Issue Section, grouped according to the date of publication of the marks in the Official Gazette. 409 Registration Certificate or Notice of Allowance Issued An application matures into a registration on the Principal or Supplemental Register upon issuance of a certificate of registration. For applications for registration on the Principal Register under §1(a) or §44 of the Trademark Act, 15 U.S.C. §1051(a) or §1126, the Office issues a certificate of registration only after the mark is published for opposition in the Official Gazette and thereafter is found ready for registration. The mark may be found ready for registration if, following its publication in the Official Gazette, the opposition period is completed without a successful opposition, ie., either no party opposes registration or the applicant prevails in any opposition proceeding or any opposition is dismissed. For intent-to-use applications, under §1(b) of the Act, 15 U.S.C. §1051(b), for which the Office has not accepted an amendment to allege use under §1(c), 15 U.S.C. §1051(c), the Office issues a "notice of allowance" upon completion of the opposition period without a successful oppposition. Issuance of the notice of allowance begins a six-month period in which the applicant must file a statement of use or a request for extension of time to file a statement of use pursuant to §1(d), 15 U.S.C. §1051(d). See TMEP $409.01. The Office issues a certificate of registration, for such cases, only after the applicant files the statement of use and the application thereafter is found ready for registration. See TMEP §410. Application files in which a notice of allowance has been issued are located in the Intent-to-Use (ITU)/ Divisional Unit of the Office until a statement of use is filed or the application is abandoned. Registration files are normally in warehouse storage. 409.01 Awaiting a Statement of Use A statement of use is required only for an intent-touse application in which the Office has issued a notice of allowance. Issuance of the notice of allowance begins a six-month period during which the applicant must file either a statement of use or a request for extension of time for filing the statement of use. Upon issuance of the notice of allowance, the application is "awaiting a statement of use" until either the applicant timely files the statement of use or the application becomes abandoned. (Regarding statements of use, see Trademark Act §1(d), 15 U.S.C. §1051(d); 37 C.F.R. §2.88; and TMEP §§903.02, 1105.05(e) and 1105.05(f).) Section 1(d)(1) of the Act provides that within six months of the date of issuance of the notice of allowance, the applicant shall file the statement of use. Section 1(d)(2) provides for up to five six-month extensions of the time in which the applicant must file the statement of use. The Office will grant an extension of time for filing a statement of use upon the applicant's filing of a proper request for such an extension pursuant to 37 C.F.R. $2.89, including the required fee, within the six-month period following issuance of the notice of allowance or within an extension previously granted by the Office, provided that the extended period would not exceed 36 months from the date of issuance of the notice of allowance. (Regarding extensions of time for filing a statement of use, see Trademark Act §1(d)(2), 15 U.S.C. $1051(d)(2); 37 C.F.R. §2.89; and TMEP §§903.02(a) and 1105.05(d).) An application is awaiting a statement of use, therefore, beginning with issuance of the notice of allowance through the following six-month period, and during any extension of that period which is granted by the Office, until filing of the statement of use or abandonment of the application. The files of applications which are awaiting a statement of use are located in the ITU/Divisional Unit. 410 Registration Issued under §1(d) When a statement of use under §1(d) is filed in an application under $1(b), the examining attorney will examine it to determine whether the application is in condition to be registered, in every respect, substantive and formal. Since approval of the statement of use signifies that the mark is eligible for registration, the statement of use cannot be approved unless and until the applicant has satisfied all requirements and overcome all refusals and thereby established its entitlement to registration. If the examining attorney determines that the application is in condition for registration, he or she will sign the block on the file wrapper marked "Section 1(d) Accepted" to indicate approval of the application for registration. If not, the examining attorney may issue an Office action in which registration is refused or requirements are made. See TMEP $403. The files of applications which are approved for registration upon examination of the statement of use are located in the Publication and Issue Section of the Office. Upon registration, the mark and all other relevant information is printed in the Official Gazette in a section entitled "TRADEMARK REGISTRATIONS ISSUED UNDER SECTION 1(d)," and the files are forwarded to the warehouse for storage. §§2.65(c) and 2.88(h)); because of an adverse decision in an ex parte appeal or an inter partes proceeding; because of withdrawal of, or failure to prosecute, an appeal to the Trademark Trial and Appeal Board; or because of dismissal of, or failure to perfect, an appeal to a court. See TMEP §1112. 412 Incomplete or Informal Papers or materials which do not include all of the required elements for receiving a filing date or which are otherwise defective such that they cannot be accorded a filing date are termed "informal" applications. See 37 C.F.R. §2.21(a). The Office will deny a filing date to such incomplete or defective application materials and return them to the person who submitted them with a notification of the defect or defects. See 37 C.F.R. §2.21(c); TMEP $705. Generally, application materials that are not entitled to be accorded a filing date are returned by the Correspondence and Mail Division (Mail Room). If, however, the Application and Classification Section determines that application materials are not entitled to a filing date, the filing date is cancelled and the materials are returned to the person who submitted them with a letter entitled "NOTICE OF INCOMPLETE TRADEMARK APPLICATION." If an examining attorney determines that application materials are not entitled to a filing date, the examining attorney will return the materials to the Application and Classification Section for appropriate handling. When a filing date is cancelled, the serial number is declared "misassigned." If, when informal application papers are returned, a filing fee (e.g., in the form of a check or money order) has been processed, the Finance Branch of the Patent and Trademark Office will process a refund of the fee. If the fee was charged to a deposit account, the account will be credited in that amount. 411 Abandoned An abandoned application is one which has not matured into a registration and which is no longer pending. An abandoned application is not entitled to be acted upon further unless revived. That is, neither the examining attorney nor the applicant can act on an abandoned application unless it is revived. See 37 C.F.R. $2.66 regarding petitions to revive. An application may become abandoned through express abandonment (37 C.F.R. §2.68); through failure of the applicant to respond completely to an Office action within six months (15 U.S.C. §1062(b) and 37 C.F.R. $2.65(a)); through failure of the applicant to file a statement of use (15 U.S.C. §1051(d)(4); 37 C.F.R. 413 Responsibility to Monitor Trademark Applications and Registrations with Due Diligence Trademark applicants and registrants are responsible for monitoring the status of their applications or registrations in cases where a notice or action from the Patent and Trademark Office is expected. Inquiries regarding the status of pending matters should be made within six months of the filing or receipt of any document for which further action by the Office is expected. The six-month due diligence standard may have implications with respect to the filing of petitions and 400-4 requests for other relief. The Office of the Assistant Commissioner for Trademarks receives a number of requests to reactivate applications and registrations occasioned by the loss of papers mailed to or from the Patent and Trademark Office. In many of these cases, the applicant or registrant may have proof that papers mailed to the Office were actually received or can aver that notices sent from the Office were never received. However, in some of these cases the request will be denied because the party seeking relief has waited too long before investigating the problem. The rationale for denial is that third parties may have relied to their detriment on the information available in the Patent and Trademark Office files and data base that an application was abandoned or that a registration has been cancelled or has expired. The Patent and Trademark Office generally processes applications, responses and other papers in the order in which they are received in the Office. Accordingly, applicants and registrants can expect to receive notice concerning these filings within predictable time periods. For example, a party filing an application for registration should expect to receive a filing receipt within four to six weeks and, in most cases, a "first action" within three to five months of the date of filing. Similarly, a registrant should expect to receive a notice of acceptance or rejection of a §8 affidavit of use or excusable nonuse within four to five months of submission, and a notice of acceptance or rejection of a renewal application within two to three months of submission. Only in rare cases would any of these time periods be longer than six months. Since it is reasonable to expect some notice from the Patent and Trademark Office about a pending matter within six months of the filing or receipt of any document, a party who has not received the expected written action or telephone call from the Office within that time frame should be put on notice that the filing may have become lost. The party awaiting notification has the burden of inquiring as to the cause of the delay. In order to be considered diligent in the monitoring of its application or registration, the party expecting notification from the Patent and Trademark Office should inquire within six months. Waiting until the end of the six-month period is not recommended. Parties should inquire as soon as they suspect that a problem exists. Written status inquiries are discouraged. Whenever possible, status inquiries should be made by calling the Trademark Status Line. The Status Line provides access, via touch tone telephone, to the current status and status date of all active federal trademark application and registration records maintained in the automated Trademark Reporting and Monitoring (TRAM) System. The Status Line is available at (703) 305-8747 through (703) 305-8752 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. After the welcoming message and the tone, callers should enter (using leading zeros, if necessary) the seven-digit registration number and the "#" symbol, or the eight-digit application number (ie., the two-digit series code followed by the six-digit serial number) and the "#" symbol, to access the current status and the date that the record entered the current status. All calls will be answered in the order received. Callers may request information for up to five application or registration records per call. If additional information regarding the status of an application or registration is required, callers may telephone the Office of Trademark Services at (703) 308-9400 and request a status check. See notices at 1112 TMOG 49 (March 27, 1990) and 1132 TMOG 33 (November 19, 1991). The following are examples of situations requiring diligent action by an applicant or registrant in monitoring the status of an application, §8 affidavit or §9 renewal application, accompanied by an acknowledgment postcard: (1) No acknowledgment postcard, filing receipt or other acknowledgment is received within a reasonable time. Diligent Action: Inquire within six months of mailing the document to the Patent and Trademark Office. Such an inquiry should be directed to the Office of the Assistant Commissioner for Trademarks at (703) 305-8900. (2) The acknowledgment post card is received but no filing receipt or other acknowledgment is received within a reasonable time. Diligent Action: Inquire within six months of receipt of the acknowledgment postcard. (3) A filing receipt for the application is received but no Office action, telephone call from the examining attorney, or notice of publication is received within a reasonable time. Diligent Action: Inquire within six months of receipt of the filing receipt. (4) A response to an Office action is mailed to the Patent and Trademark Office but no further Office action, telephone call, notice of publication, or other acknowledgment is received within a reasonable time. Diligent Action: Inquire within six months of mailing the response. (5) A notice of publication is received for an application under §1(b), but no notice of allowance or notification of potential opposition is received within a reasonable time. Diligent Action: Inquire within six months of receipt of the notice of publication. In the event that the party discovers that its application or registration is no longer active, or that a required paper has not been received by the Patent and Trademark Office, the applicant or registrant should promptly file a petition to the Commissioner or take other appropriate action to rectify the situation. The time limits for filing petitions are strictly applied. See TMEP §1704. For certificate-of-mailing and "Express Mail" procedures to avoid lateness due to mail delay, see 37 C.F.R. §§1.8 and 1.10; TMEP §§702.02 and 702.03. In summary, applicants and registrants have a duty to monitor the status of their applications and registrations. If nothing has been heard from the Patent and Trademark Office within a six-month period, the party awaiting notification has the burden of inquiring as to the status. Status inquiries should be made via the Trademark Status Line whenever possible. Should the status inquiry reveal that the relevant document is lost, or some other problem exists, a petition to the Commissioner or other required action should be filed within 60 days. $2.146(d). Failure to act diligently and follow up with 37 C.F.R. appropriate action may result in denial of the requested relief. See notice at 1143 TMOG 73 (October 27, 1992). Regarding inquiries from congressional offices concerning pending applications or other matters, see TMEP $1804. 501.03 501.04 501.05 502 502.01 502.02 503 503.01 503.02 503.03 503.04 503.05 Effect of Failure to Record Assignment Assignee Stands in Place of Applicant or Establishing Ownership of Applications or Issuance of Registration Certificate in Name Recording in Assignment Division Recording Procedure and Recordation Date Requirements for Recording 503.05(a) Formal Requirements for Documents 503.05(b) English Language Requirement 503.05(c) Fee for Recording 501 Assignment of Marks 501.01 Assignability of Marks in Applications and Registrations Extract from 15 U.S.C. $1060. A registered mark or a mark for which application to register has been filed shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark. 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 501.01(a) Assignment of Intent-to-Use Extract from 15 U.S.C. $1060. 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. Section 10 of the Trademark Act, 15 U.S.C. §1060, states that no application under §1(b) is assignable prior to the filing of the statement of use except to a successor to the applicant's business, or portion of the business, to which the mark pertains, if that business is ongoing and existing. See also 37 C.F.R. §3.16. As a general rule, the Patent and Trademark Office will not examine proposed assignments to determine compliance with this provision. However, the examining attorney will inquire to determine whether an assignment conforms to the requirements of the 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. Regarding when an examining attorney should make such an inquiry, the governing principle is that the Office will not investigate or evaluate the validity of assignments. This issue is more appropriate for resolution in an inter partes proceeding. The examining attorney should issue an inquiry concerning the compliance of an assignment with the cited provisions of $10 if the application itself includes a statement indicating failure to comply. This should be extremely rare. The examining attorney should also issue an inquiry if all of the following conditions apply: (1) the assignment is executed prior to the filing of an acceptable amendment to allege use or |