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.