819.01(f)    Basis or Bases for Filing

The application must include at least one basis for filing under §1 and/or §44 of the Act that meets the requirements of 37 C.F.R. §2.34.  If more than one basis is set forth, the applicant must comply with the requirements of 37 C.F.R. §2.34  for each asserted basis.  37 C.F.R. §2.22(a)(6).  If this application filing requirement is not met, the applicant will be required to pay an additional processing fee. 37 C.F.R §2.22(c).

In a multiple-basis application, if the applicant fails to comply with the requirements of 37 C.F.R. §2.34  for one of the bases claimed in the initial application, the applicant cannot avoid paying the additional processing fee by deleting the relevant basis.

819.01(f)(i)    Section 1(a) - Use in Commerce

The requirements for establishing a §1(a) basis are set forth in 37 C.F.R. §2.34(a)(1).  See also TMEP §806.01(a).

Specimen(s).  The application must include one specimen showing how the applicant uses the mark in commerce for each class of goods/services. 37 C.F.R. §§2.22(a)(6), 2.34(a)(1)(iv). An application must include an attachment in the "Specimen" field in order for the application to validate.  As long as the specimen depicts the mark, no additional fee will be required if registration is refused because the specimen is unacceptable.

An additional processing fee will be required if the mark on the specimen is materially different from the mark on the drawing. See 37 C.F.R. §2.22(c).  If the marks on the specimen and the drawing are materially different, the applicant has, in effect, failed to submit a specimen showing use of the mark sought to be registered.  However, no additional fee will be required if the difference between the mark on the specimen and the mark on the drawing is not material.

Example:  The mark on the drawing is ZZZ, and the mark on the specimen is ZEBRAMAX.  Amending the drawing to match the specimen would materially alter the mark on the drawing, so the applicant, in effect, has failed to submit a specimen showing use of the mark on the drawing.  As a result, the application does not meet the TEAS Plus application requirements and the examining attorney will require the additional processing fee.

Example:  The mark on the drawing is ZEBRAMAXX, and the mark on the specimen is ZEBRAMAX.  The mark on the drawing is not a substantially exact representation of the mark on the specimen, but the difference between the marks is not material, so the applicant may amend the drawing, or submit a substitute specimen showing use of the mark on the drawing, without paying an additional processing fee.

Verified Statement of Use in Commerce.  The application must include a verified statement that the mark is in use in commerce on or in connection with the goods/services listed in the application. 37 C.F.R. §§2.22(a)(6), 2.34(a)(1)(i). The TEAS Plus application form will always include this statement when the applicant asserts a §1(a) basis.  See TMEP §819.01(l) regarding verification.

Dates of Use.  The application must include a date of first use of the mark anywhere and a date of first use of the mark in commerce for each class of goods/services. 37 C.F.R. §§2.22(a)(6), 2.34(a)(1)(ii)-(iii). When the applicant indicates that it is filing under §1(a), the TEAS Plus application form brings up free-text fields in which applicant must type the date of first use anywhere and date of first use in commerce.  The TEAS Plus application will not validate unless these fields are completed in the appropriate format (MM/DD/YYYY).  If the dates are later amended, the applicant will not be required to pay an additional processing fee.

819.01(f)(ii)    Section 1(b) - Intent to Use

A §1(b) application must include 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 listed in the application.  37 C.F.R. §2.34(a)(2).  The TEAS Plus application form will always include this statement when the applicant asserts a §1(b) basis.  See TMEP §819.01(l) regarding verification.

819.01(f)(iii)    Section 44(e) - Foreign Registration  

The requirements for establishing a §44(e) basis are set forth in 37 C.F.R. §2.34(a)(3).   See also TMEP §806.01(d).  The application must include a digitized image of a copy, a certification, or a certified copy of a registration in the applicant’s country of origin showing that the mark has been registered in that country, and that the registration is in full force and effect.  37 C.F.R. §2.34(a)(3)(ii). If the foreign registration is not in the English language, the applicant must submit a translation. Id.

The following are examples of situations where an additional fee will be required:

  • Foreign Registration Omitted.  The TEAS Plus application form for a §44(e) filing basis will not validate unless it includes an attachment in the "Foreign Registration" field. An additional processing fee will be required if the applicant attaches inappropriate material, such as a copy of the drawing or of the foreign application.  37 C.F.R. §2.22(c).
  • Translation of Foreign Registration Omitted.  37 C.F.R. §§2.22(a)(6), 2.34(a)(3)(ii).  An additional processing fee will be required if the foreign registration is not in the English language and the applicant does not include a translation. 37 C.F.R. §2.22(c).
  • Mark Not on Foreign Registration.  37 C.F.R. §§2.22(a)(6), 2.34(a)(3)(ii). An additional processing fee will be required if the mark shown in the drawing does not appear on the foreign registration. 37 C.F.R. §2.22(c).
  • Material Alteration.  37 C.F.R. §§2.22(a)(6), 2.34(a)(3)(ii). An additional processing fee will be required if the mark on the drawing is a material alteration of the mark on the foreign registration. 37 C.F.R. §2.22(c). However, no additional fee will be required if the difference between the mark on the foreign registration and the mark on the drawing is not material.

Example:  The mark on the drawing is HI-TECH, and the mark on the foreign registration is HI-TECH!  The mark on the drawing is unacceptable because it is not a substantially exact representation of the mark on the foreign registration, but the difference between the marks is not material, so the applicant may amend the drawing to match the foreign registration without paying the additional processing fee.

Example:  The mark on the drawing is HI-TECH, and the mark on the foreign registration is TECHNIQUES.  Amending the drawing to match the foreign registration would materially alter the mark on the drawing.  In these circumstances, the application does not meet the TEAS Plus application filing requirements and the applicant must pay the additional processing fee.

  • Goods/Services Exceed Scope of Foreign Registration. 37 C.F.R. §2.22(a)(7). An additional processing fee will be required if the examining attorney determines that the goods/services for which registration is sought under §44(e) in the U.S. application exceed the scope of those in the foreign registration.  37 C.F.R. §2.22(c).

Foreign Registration Due to Expire - No Fee Required.  No additional fee will be required if the foreign registration will expire before the U.S. registration will issue, and the applicant does not submit evidence in the initial application that the foreign registration will be in effect when the U.S. registration issues.  Prior to registration, however, the applicant will be required to submit a digitized image of a copy, a certification, or a certified copy from the country of origin to establish that the foreign registration has been renewed. See 37 C.F.R. §2.34(a)(3)(iii).

Bona Fide Intention to Use the Mark in Commerce.  The application must include 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 listed in the application.  37 C.F.R. §2.34(a)(3)(i). The TEAS Plus application form will always include this statement when the applicant asserts a §44(e) basis.  See TMEP §819.01(l) regarding verification.

819.01(f)(iv)    Section 44(d) - Foreign Application 

The requirements for establishing a filing basis under §44(d) are set forth in 37 C.F.R. §2.34(a)(4).   See also TMEP §806.01(c).

Claim of Priority Filed Within Six Months of Foreign Filing.  An additional processing fee will be required if the claim of priority is not filed within six months of the filing date of the foreign application. 37 C.F.R. §2.22(c). The applicant can submit the priority claim after the filing date of the U.S. application, as long as the priority claim is filed within six months after the foreign filing. 37 C.F.R. §§2.22(a)(6), 2.34(a)(4)(i).

First Filed Application.  The applicant must:  (a) specify the filing date and country of the first regularly filed foreign application; or (b) state that the application is based upon a subsequent regularly filed application in the same foreign country, and that any prior-filed application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority. 37 C.F.R. §2.22(a)(6), 2.34(a)(4)(i).  An additional processing fee will be required if applicant does not meet this requirement. 37 C.F.R. §2.22(c).

Goods/Services Exceed Scope of Foreign Registration.  An additional processing fee will be required if the examining attorney determines that the goods/services for which registration is sought under §44 in the U.S. application exceed the scope of those in the foreign application or registration.  37 C.F.R. §2.22(a)(7), (c).

Serial Number of Foreign Application Omitted - No Fee Required.  No additional processing fee is required if a §44(d) filing basis is asserted and the applicant fails to specify the serial number of the foreign application in the initial application, because some applicants will not yet know the serial number of the foreign application at the time of filing in the United States.  However, the serial number must be provided before the application can be approved for publication.  37 C.F.R. §2.34(a)(4)(i)(A).

Bona Fide Intention to Use the Mark in Commerce.  The application must include 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 listed in the application.  37 C.F.R. §§2.22(a)(6), 2.34(a)(4)(ii). The TEAS Plus application form will always include this statement when the applicant asserts a §44(d) basis.  See TMEP §819.01(l) regarding verification.