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Amending Dates of First Use Anywhere

Posted by Anonymous . updated on 11/11/2009
A colleague posed the following question to which I was unable to provide a definitive answer:

Is there a mechanism by which you can amend the date of first use anywhere while your pending application is in a black-out or other period where the application is essentially frozen?  For example, if you are in the midst of an opposition and uncover evidence that the date of first use anywhere is actually later than that filed in good faith, are you able to address that in some fashion?  I know that 903.05 provides the general guidelines for amending dates, but it is silent with respect to the actual timing of the amendments. 

[RE: the opposition hypothetical, I'm guessing that the presumption would be that the date of first use in commerce would remain unchanged, otherwise there would be a whole host of additional issues to sort through.]
Answers (2)
 
iplawprac
As follow-up, I know that TBMP 514 discusses amending applications during the opposition proceeding, but I think the question in that case would be whether an amendment to the date of first use anywhere should have been filed prior to the inception of the trial because of its effect on the proceeding.  My thinking is that it could still be filed during the trial, as it is the date of first use in commerce that would govern priority rights, but I'm not sure if that is accurate.
 
 
Spielman
Generally,

"An application involved in a proceeding may not be amended in substance ... except with the consent of the other party or parties and the approval of the Trademark Trial and Appeal Board, or except upon motion." 37 C.F.R ? 2.133(a).

Hope this helps.

Darren Spielman
Kain & Associates
www.ComplexIP.com
 

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