806.04 Deleting a Basis
If an applicant claims more than one basis, the applicant may delete a basis at any time, before or after publication. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a basis from a multiple-basis application after publication. When the applicant deletes a basis, the applicant must also delete the goods/services/classes covered solely by that basis. 37 C.F.R. §2.35(b)(7).
To expedite processing, the USPTO recommends that a request to delete a §1(b) basis from a multiple-basis application be filed through TEAS, at http://www.uspto.gov/trademarks/teas/post_publication.jsp.
806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance
If all of the goods/services/classes in an application are based on §1(b) and §44(e), the applicant may file a request to delete the §1(b) basis by amendment at any time, except as set forth below. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a §1(b) basis from a multiple-basis application after publication. To expedite processing, the USPTO recommends that any request to delete a §1(b) basis be filed through TEAS, at http://www.uspto.gov/trademarks/teas/post_publication.jsp, using the "Request to Delete §1(b) Basis, Intent-to-Use" form.
If the application has some goods/services/classes based solely on §1(b) and some goods/services/classes based solely on §1(a) or §44(e), and the applicant wants to delete the §1(b) goods/services/classes after publication or issuance of the notice of allowance, the applicant must submit a post-publication amendment requesting the deletion and that the application proceed to registration for the other goods/services/classes that are not based on §1(b). To expedite processing, the USPTO recommends that any request to delete the §1(b) goods/services/classes be filed through TEAS, at http://www.uspto.gov/trademarks/teas/post_publication.jsp, using the "Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment" form. For further information on filing post-publication amendments, see TMEP §1505.
If a notice of allowance has issued, the request must be filed: (1) within six months of the issuance date of the notice of allowance, (2) within a previously granted extension of time to file a statement of use, or (3) between the filing date of the statement of use and the date on which the examining attorney approves the mark for registration. If filed on paper, the request should be directed to the ITU Unit. The ITU Unit will cancel the notice of allowance, and take the necessary steps to delete the §1(b) basis and schedule the issuance of the registration.
If filed on paper before issuance of the notice of allowance, the request should be faxed to Post Publication Amendments/Corrections at 571-270-9007. The request will be reviewed by paralegal specialists in the Office of Petitions, who will delete the §1(b) basis and schedule the issuance of the registration.
806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis
If an applicant properly claims §44(d) in addition to another basis, the applicant may elect not to perfect a §44(e) basis and still retain the §44(d) priority filing date. 37 C.F.R. §§2.35(b)(3) and (4); TMEP §§806.01(c) and 806.02(f).
When a §44(d) applicant elects not to proceed to registration under §44(e), the USPTO does not delete the §44(d) priority claim from the Trademark database. Both the §44(d) priority claim and the other basis will remain in the Trademark database.
Sometimes, a §44(d) applicant who elects not to perfect a §44(e) basis will file an amendment "deleting" the §44 basis. In this situation, the USPTO will presume that the applicant wants to retain the priority claim, unless the applicant specifically states that it wants to delete the priority claim and instead rely on the actual filing date of the application in the United States.
If the applicant is not entitled to priority (e.g., because the United States application was not filed within six months of the foreign filing), the examining attorney must ensure that the priority claim is deleted from the Trademark database, and must conduct a new search of USPTO records for conflicting marks.