What is an Amendment to Allege Use?

Amendment to Allege Use

An Amendment to Allege Use is a sworn declaration filed with the United States Patent and Trademark Office (USPTO) indicating that your trademark is currently in use in commerce in connection with all of the products/services recited in your trademark application.  The Amendment to Allege Use requires you to (1) set forth the date on which your mark was first used anywhere in the United States, (2) set forth the date on which your mark was first used in interstate commerce, and (3) submit a proper specimen showing actual use of your mark.  If you filed your application on an intent to use basis, then you will eventually need to demonstrate actual use of your trademark by filing either an Amendment to Allege Use or the Statement of Use.

When Can I File an Amendment to Allege Use?

The only significant difference between the Amendment to Allege Use and the Statement of Use has to do with when the document is filed.  The Statement of Use is filed after your trademark application has been published for opposition and the USPTO issues the Notice of Allowance.  On the other hand, an Amendment to Allege Use may be filed under the following circumstances:

  1.  Your trademark application has not yet been reviewed by a trademark examining attorney
  2.  Your trademark application has been reviewed by a trademark examining attorney but the mark has not yet been approved for publication

Let’s take a closer look at each scenario so that you get a better idea as to when filing an Amendment to Allege Use may be appropriate.

Scenario #1 – Amendment to Allege Use Before Application is Reviewed

In the first scenario, let’s say that you file an intent-to-use trademark application on January 1 in order to reserve a mark you hadn’t yet started using.  A month later, you begin making actual sales of the products listed in your trademark application.  You check the status of your trademark application online and see that it has not yet been examined (which wouldn’t be unusual since it generally takes about 3-4 months for an application to be reviewed).  You would be in the position to file an Amendment to Allege Use, which converts your trademark application from an intent-to-use application to an in-use application.

The benefit of filing an Amendment to Allege Use under these circumstances is a reduction of the overall time it will take to obtain a trademark registration.  This is because the USPTO won’t have to issue the Notice of Allowance and you won’t have to file the Statement of Use.  This speeds up the entire registration process by at least 2-3 months.

However, there’s also a significant drawback to filing an Amendment to Allege Use before your trademark application is examined.  There is a fee associated with filing an Amendment to Allege Use.  If your trademark application goes abandoned at any point before registration, that fee is NOT refunded by the USPTO.  So, if the trademark examining attorney refuses registration of your trademark after reviewing your application, or if a trademark opposition is filed and you either lose the opposition or choose not to defend it, your application will go abandoned and the fee you paid for the Amendment to Allege Use will go to waste.

Scenario #2 – Amendment to Allege Use After Application is Reviewed

In the second scenario, let’s say that you file an intent-to-use trademark application in order to reserve a mark you hadn’t yet started using.  A few months later, the trademark examining attorney reviews your application and issues a trademark office action indicating that your mark is being refused registration on the Principal Register on the basis that it’s merely descriptive of the products/services listed in your application.  After careful consideration, you decide it isn’t worth fighting the refusal and that it would be best to amend your application to seek registration of your mark on the Supplemental Register.  However, in order to amend to the Supplemental Register, your mark must be in use in commerce.  If your mark is currently in use in commerce, you would be able to file an Amendment to Allege Use and request that the examining attorney approve your mark for registration on the Supplemental Register.

Questions Regarding an Amendment to Allege Use?

I’m US trademark attorney Morris Turek.  If you have questions about whether filing an Amendment to Allege Use is appropriate in your particular situation, or need assistance with filing an Amendment to Allege Use, please give me a call at (314) 749-4059 for your free consultation.  You may also request a consultation by sending me an email at morris@yourtrademarkattorney.com or by filling out my contact form (below).  I look forward to hearing from you soon.