806.03   Amendments to Add or Substitute a Basis

806.03(a)   When Basis Can be Changed

Section 1 or §44 Application - Before Publication.  The applicant may add or substitute a basis before publication, provided that the applicant meets all requirements for the new basis.  37 C.F.R. §2.35(b)(1).

Section 1 or §44 Application - After Publication.  In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must first petition the Director to allow the examining attorney to consider the amendment.  If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished.  37 C.F.R. §2.35(b)(2).  See TMEP §§806.03(j) et seq. for further information.

Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a).  See Trademark Trial and Appeal Board Manual of Procedure  ("TBMP") §514.

Section 66(a) Application.  In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31.  37 C.F.R. §2.35(a); TMEP §806.03(k).

806.03(b)   Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period

An applicant may add or substitute a §44(d) basis only during the six-month priority period following the filing date of the foreign application.  37 C.F.R. §2.35(b)(5).  See TMEP §806.02(f) regarding §44(d) combined with another basis.

806.03(c)   Amendment From §1(a) to §1(b)

In an application filed under §1(a), if the §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis.  The USPTO will presume that the applicant had a continuing valid basis.  37 C.F.R. §2.35(b)(3).

Although there is a presumption of a continuing valid basis, when amending from §1(a) to §1(b), the applicant must confirm the presumption by submitting a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services, and that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods/services as of the application filing date.  15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2).

If the applicant wishes to substitute §1(b) as a basis after publication of an application filed under §1(a), the applicant must petition the Director to allow the examining attorney to consider the amendment.  37 C.F.R. §2.35(b)(2). In a multiple-basis application, if a notice of allowance has issued for those goods/services based on §1(b), the petition will not be granted unless a request to divide the application is submitted with the petition. The goods/services to be amended from §1(a) to §1(b) must be divided out in order to process the amendment because republication is required. (37 C.F.R. §2.35(b)(2)). The petitioner may include all the goods/services based on §1(a) in the child application or only those to which the amendment to §1(b) applies. If dividing within a class, in addition to the fee for filing a request to divide, an application filing fee is required. See 37 C.F.R. §2.87 and TMEP §§1110 et seq. regarding requests to divide.

Note that in a §1(b) application, once an applicant has filed a statement of use, the applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.  Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed.  See TMEP §1104.10 regarding withdrawing an amendment to allege use.

See TMEP §§806.03(j) et seq. regarding amendment of the basis after publication.

806.03(d)   Amendment From §44 to §1(b)

An applicant may amend the basis from §44 to §1(b).  The USPTO will presume that the applicant had a continuing valid basis, because the applicant had a bona fide intention to use the mark in commerce as of the application filing date.  37 C.F.R. §2.35(b)(3).  Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).  It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis.  See TMEP §806.03(i).

Applicant must clearly indicate whether it wants to:  (1) add the §1(b) basis and maintain the §44 basis; or (2) replace the §44 basis with the §1(b) basis.

In a §44(d) application, the applicant may substitute §1(b) as a basis and still retain the priority filing date.  37 C.F.R. §§2.35(b)(3) and (4); TMEP §806.03(h).  If the applicant chooses to add the §1(b) basis and maintain the §44 basis, the examining attorney cannot approve the mark for publication until the applicant files a copy of the foreign registration.  See TMEP §806.02(f).

See TMEP §806.03(j) regarding amendment of the basis after publication.

806.03(e)   Allegation of Use Required to Amend From §1(b) to §1(a)

An applicant who claims a §1(b) basis for any or all of the goods or services may not amend the application to seek registration under §1(a) of the Act for those goods or services, unless the applicant files an allegation of use.  37 C.F.R. §2.35(b)(8).  See TMEP §§1103, 1104 et seq., and 1109 et seq. regarding allegations of use.

806.03(f)   Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application

An applicant can add or substitute a basis only if the applicant meets all the requirements for the new basis.  37 C.F.R. §2.35(b)(1).  Therefore, an applicant may not amend a §44 application to claim a §1(a) basis unless the applicant:  (1) verifies that the mark is in use in commerce on or in connection with the goods or services listed in the application, and that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; (2) provides a specimen, with a verified statement that the specimen was in use in commerce as of the application filing date; and (3) supplies the date of first use anywhere and the date of first use in commerce of the mark.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1), 2.59(a), and 2.71(c)(1); TMEP §§806.01(a), 806.03(i), 903.01, 903.02, 903.04, and 904.05.  

If an applicant began using the mark in commerce after the application filing date, the applicant cannot add or substitute §1(a) as a basis.  However, the applicant may add or substitute §1(b) as a basis, and concurrently file an amendment to allege use.  See TMEP §806.03(d) regarding amendment of the basis from §44 to §1(b), and TMEP §§1104 et seq. regarding amendments to allege use.

806.03(g)   Amendment From §1(b) to §44

An applicant may amend the basis from §1(b) to §44, if the applicant meets the requirements of §44 as of the filing date of the amendment.  It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis.  See TMEP §806.03(i).

When an applicant adds §44(e) as a basis, the applicant must submit a copy of the foreign registration (and a translation, if necessary) with the amendment.  37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b).

The applicant may add a claim of priority under §44(d) only within the six-month priority period following the filing date of the foreign application.  37 C.F.R. §2.35(b)(5).  See TMEP §806.02(f) regarding §44(d) combined with another basis.

If the amendment is filed before publication, the applicant must clearly indicate whether it wants to:  (1) add the §44 basis and maintain the §1(b) basis; or (2) replace the §1(b) basis with the §44 basis.  If the applicant chooses to add §44 and maintain the §1(b) basis, the application will proceed to publication with a dual basis.  See TMEP §§806.03(j) et seq. regarding amendment of the basis after publication.

806.03(h)   Effect of Substitution of Basis on Application Filing Date

When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis.  The applicant will retain the original filing date, provided that the applicant has had a continuing valid basis for registration since the application filing date.  Unless there is contradictory evidence in the record, the USPTO will presume that there was a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3); Kraft Group LLC v. Harpole, 90 USPQ2d 1837 (TTAB 2009); Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).

If the applicant properly asserts a claim of priority under §44(d) during the six-month priority period, the applicant will retain the priority filing date, no matter which basis for registration is ultimately established, provided that the applicant has had a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3) and (4); TMEP §§806.02(f) and 1003.

If there is no continuing valid basis, the application is void, and registration will be refused.  In this situation, the applicant cannot amend the filing date, and the USPTO will not refund the filing fee.  See TMEP §205.

806.03(i)   Verification of Amendment Required

An applicant who adds or substitutes use in commerce under §1(a) as a basis must verify that the mark is in use in commerce on or in connection with the goods/services covered by the §1(a) basis, and that the mark was in use in commerce on or in connection with these goods/services as of the filing date of the application.  37 C.F.R. §2.34(a)(1)(i).

An applicant who adds or substitutes §1(b), §44(d), or §44(e) as a basis must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services covered by the amendment, and that the applicant had a bona fide intention to use the mark in commerce on or in connection with these goods/services as of the filing date of the application, unless a verified statement of the applicant’s bona fide intention to use the mark in commerce has already been filed with respect to all the goods/services covered by the new basis.  37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i), and 2.34(a)(4)(ii).

Example:  If a §44 application originally included a verified statement that the applicant had a bona fide intention to use the mark in commerce, it is not necessary to repeat this statement if the applicant later adds or substitutes a §1(b) basis for the goods/services covered by the §44 basis.

See TMEP §804.04 regarding persons who may sign a verification on behalf of an applicant under 37 C.F.R. §2.193(e)(1).

806.03(j)   Petition to Amend Basis After Publication - §1 or §44 Application

37 C.F.R. §2.35(b)(2) 

After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, but only with the express permission of the Director, after consideration on petition.  Republication will be required.  The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by §2.133(a).

In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment.  37 C.F.R. §2.35(b)(2).  Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a) (see TBMP §514).

When granting a petition to amend the basis, the Director will restore jurisdiction to the examining attorney to consider the amendment, except in a §1(b) application in which the notice of allowance has issued.  See TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.

If the examining attorney accepts the new basis, the mark must be republished to provide notice to third parties who may wish to oppose registration based on issues that arise in connection with the new basis.  37 C.F.R. §2.35(b)(2).

If the examining attorney does not accept the new basis, he or she will issue an Office action using standard examination procedures except in a §1(b) application in which a notice of allowance has issued and no statement of use has been filed.  See TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.   

Any petition to change the basis must be filed before issuance of the registration.  To avoid the possible issuance of a registration without consideration of the petition, an applicant should submit the petition no later than six weeks after publication.

The Director will not grant a petition to amend the basis after publication if the amendment could substantially delay prosecution of the application.  For example, the Director will deny petitions to amend the basis after publication in the following situations:

  • Once the Director has granted a petition to amend the basis after publication, the Director will not thereafter grant a second petition to amend the basis with respect to the same application.
  • If an applicant had previously deleted a §1(b) basis after a notice of allowance had issued, the Director will not grant a petition to re-assert §1(b) as a basis for registration.  This would require issuance of a new notice of allowance and could result in filing of a statement of use more than 36 months after issuance of the first notice of allowance, which is not permitted under §1(d) of the Act, 15 U.S.C. §1051(d).

See TMEP §806.03(j)(i) regarding amendment of the basis in a §1(b) application between publication and issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendment of the basis after issuance of a notice of allowance.

Petitions to amend the basis after publication are processed by the Office of Petitions, which is part of the Office of the Deputy Commissioner for Trademark Examination Policy.

806.03(j)(i)   Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance

An applicant who wants to add a §44(e) basis to a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment.  37 C.F.R. §2.35(b)(2); TMEP §806.03(j).  The petition should indicate whether applicant wants to maintain the §1(b) basis.  The applicant has three options:

  • (1) Applicant may delete the §1(b) basis and substitute §44(e).  If the petition is granted, the Office of Petitions will delete the §1(b) basis from TRAM, and enter the foreign registration information.  The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures.  If the examining attorney accepts the §44(e) basis, the examining attorney will approve the mark for republication.  If registration of the mark is not successfully opposed, a registration will issue.  If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s).  The applicant cannot later re-assert the §1(b) basis;
  • (2) Applicant may add §44(e) and retain the §1(b) basis.  If the Director grants the petition and the examining attorney accepts the §44(e) basis, the application will be republished with a dual basis and, if registration of the mark is not opposed, a notice of allowance will issue.  If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s).  The applicant may elect to withdraw the amendment and proceed under §1(b) as the sole basis; or
  • (3) Applicant may add §44(e) and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis.  If the Director grants the petition and the examining attorney accepts the §44(e) basis, the examining attorney will:  (a) ensure that the §1(b) basis is deleted from TRAM; and (b) approve the mark for republication.  If the mark is not successfully opposed, a registration will issue.  If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s).  The applicant may elect to withdraw the amendment and proceed under §1(b) as the sole basis.

806.03(j)(ii)   Amending the Basis of a §1(b) Application Between Issuance of Notice of Allowance and Filing of Statement of Use

Amendments Adding or Substituting a §44 Basis

An applicant who wants to add or substitute a §44(e) basis in a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment.  If the petition is granted, the mark must be republished.  37 C.F.R. §2.35(b)(2); TMEP §806.03(j).

The petition should indicate whether applicant wants to maintain the §1(b) basis.  The applicant has three options:

  • (1) The applicant may delete the §1(b) basis and substitute §44(e).  If the petition is granted, Office of Petitions will delete the §1(b) basis from TRAM, and enter the foreign registration information.  The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures.  If the examining attorney accepts the §44(e) basis, the mark will be republished and, if registration of the mark is not successfully opposed, a registration will issue.  If the examining attorney does not accept the new basis, the examining attorney will issue an Office action advising the applicant of the reasons.  The applicant cannot re-assert the §1(b) basis;
  • (2) The applicant may add §44(e) and perfect the §1(b) basis by filing a statement of use with the petition.  The Director will not grant a petition to add §44(e) and retain the §1(b) basis unless a statement of use is filed with the petition, because examination of the §44(e) basis could substantially delay prosecution of the application.  If the examining attorney found the §44(e) basis unacceptable, the notice of allowance would have to be cancelled in order to issue an Office action.  The USPTO will not cancel or reissue the notice of allowance in this situation, since this could result in the filing of a statement of use more than 36 months after issuance of the first notice of allowance, which is not permitted under §1(d) of the Act, 15 U.S.C. §1051(d).  If the petition is granted, the examining attorney will examine the §44(e) basis during examination of the statement of use; or
  • (3) As noted above, the applicant may not add §44(e) and maintain a dual basis, unless a statement of use is filed with the petition.  However, the applicant may add a §44(e) basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis.  Applicants who request to maintain the §1(b) basis pending acceptance of the §44(e) basis must also file a request for extension of time to file a statement of use when due (or a statement of use) or the application will be abandoned. 37 C.F.R. §2.89. If the Director grants the petition and the examining attorney accepts the §44(e) basis, the examining attorney will:  (a) ensure that the §1(b) basis is deleted from TRAM and the Notice of Allowance is cancelled; and (b) approve the mark for republication.  If the mark is not successfully opposed, a registration will issue.  If the examining attorney does not accept the §44(e) basis, the examining attorney will notify the applicant by telephone or e-mail of the reasons why the amendment is unacceptable. The applicant may then (1) agree to delete the §1(b) basis so that an examiner's amendment and/or appropriate Office action regarding the requested basis amendment can be issued, (2) withdraw the request to amend the basis, or (3) request that the amendment remain pending until a statement of use is filed. The examining attorney should also enter an appropriate Note to the File in the record.

See also 37 C.F.R. §2.77 and TMEP §§1107 et seq.

Amendments That Apply to Less Than All the Goods/Services

The Director will not grant a petition to amend the basis if the amendment does not apply to all the goods/services covered by the §1(b) basis, unless the applicant concurrently files:  (1) a request to divide out the goods/services to which the amendment applies; or (2) an amendment deleting the good/services not covered by the amendment.  See 37 C.F.R. §2.87 and TMEP §§1110 et seq. regarding requests to divide.

806.03(j)(iii)     Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration

A §1(b) applicant who wants to add or substitute a §44(e) basis after filing a statement of use must petition the Director to allow the examining attorney to consider the amendment.  If the petition is granted, the mark must be republished.  37 C.F.R. §2.35(b)(2); TMEP §806.03(j).

While an applicant may not withdraw the statement of use (37 C.F.R. §2.88(g); TMEP §1109.17), the applicant may elect not to perfect the use basis and substitute §44(e).  The statement of use, specimen(s), and any materials submitted with the statement of use will remain part of the record even if the §1(b) basis is deleted.  See 37 C.F.R. §2.25.

The petition should indicate whether applicant wants to maintain the §1(b) basis.  The applicant has three options:

  • (1)   The applicant may delete the §1(b) basis and substitute §44(e).  If the petition is granted, the Office of Petitions will delete the §1(b) basis from TRAM, and enter the foreign registration information.  The examining attorney will be instructed to examine the §44(e) basis, in accordance with standard examination procedures.  If the examining attorney accepts the §44(e) basis, the examining attorney must e-mail the internal TMPHOTOCOMP mailbox to ensure that the mark is republished.  If registration of the mark is not successfully opposed, a registration will issue.  If the examining attorney does not accept the new basis, the examining attorney will issue an Office action advising the applicant of the reasons.  The applicant cannot re-assert the §1(b) basis;
  • (2)   The applicant may add §44(e) and maintain the §1(b) basis.  If the petition is granted, the examining attorney will be instructed to examine both the §1(b) and §44(e) bases, in accordance with standard examination procedures.  If the §44(e) basis is unacceptable, the examining attorney must issue an Office action explaining the reasons.  If an Office action is already outstanding, the examining attorney must issue a supplemental Office action, with a new six-month response period.  The examining attorney must indicate that the action is supplemental to the previous action and must incorporate all outstanding issues by reference to the previous action.

      If the §44(e) basis is acceptable, an Office action is outstanding, and deletion of the §1(b) basis would resolve all outstanding issues, the examining attorney should contact the applicant by telephone or e-mail to notify the applicant that the §44(e) basis is acceptable and inquire as to whether the applicant wants to delete the §1(b) basis.  The §1(b) basis may be deleted by examiner’s amendment.  If the applicant authorizes such an examiner’s amendment, the examining attorney must e-mail the internal TMPHOTOCOMP mailbox to ensure that:  (a) the §1(b) basis is deleted from TRAM; (b) the dates of use are deleted from TRAM; (c) the foreign registration information is entered; and (d) the mark is republished.  If the mark is not successfully opposed, a registration will issue.

      If the applicant does not want to delete the §1(b) basis, the examining attorney must advise the applicant that a response to the Office action is due within six months of the date of issuance, and enter an appropriate Note to the File in the record.  The applicant must respond to the Office action within six months of the issuance date, or the application will be abandoned; or

  • (3) The applicant may add a §44(e) basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis.  If the petition is granted, the examining attorney will be instructed to examine the §44(e) basis in addition to the statement of use.

      If the examining attorney accepts the §44(e) basis, the examining attorney must issue a "no-call" examiner’s amendment (see TMEP §707.02), and must e-mail the internal TMPHOTOCOMP mailbox to ensure that:  (a) the §1(b) basis is deleted from TRAM; (b) the dates of use are deleted from TRAM; (c) the foreign registration information is entered; and (d) the mark is republished.  If the mark is not successfully opposed, a registration will issue.

      If the examining attorney does not accept the §44(e) basis, he or she will refuse the amendment to the basis and address any additional issue(s) that arise during examination of the statement of use in an Office action.  If an Office action has already been issued, the examining attorney must issue a supplemental action, with a new six-month response period, notifying the applicant that the §44 basis is unacceptable.  The examining attorney must indicate that the action is supplemental to the previous action and incorporate all outstanding issues by reference to the previous action.  The applicant may choose to withdraw the request to amend the basis.

Filing a petition to add or substitute a new basis does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in an application.  See TMEP §§711 et seq. regarding the deadline for response to an Office action.  If the applicant has filed a petition to delete the §1(b) basis and substitute §44(e), but the petition has not yet been acted on, the applicant may respond to a refusal or requirement relating only to the §1(b) basis by informing the examining attorney that a petition has been filed to add §44(e) and delete the §1(b) basis.  If the applicant has filed a petition to add a §44(e) basis and maintain the §1(b) basis, or a petition requesting that the §1(b) basis be deleted if the examining attorney accepts the §44(e) basis, but the petition has not yet been acted on, the applicant should state in the response that the petition has been filed, but must also respond to any outstanding issues regarding the statement of use.

806.03(k)   Basis Cannot be Changed in §66(a) Application

In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31.  37 C.F.R. §2.35(a).  See TMEP §§1904.09 et seq. regarding transformation.

806.03(l)   §66(a) Basis Cannot be Added to §1 or §44 Application

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO.  It cannot be added or substituted as a basis in an application originally filed under §1 or §44.