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.