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

An 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. The applicant must submit a copy of the foreign registration (and a translation, if necessary) with the petition. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01 and 1004.01(b). 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 request to delete the §1(b) basis and substitute §44(e). If the petition is granted, 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 ensure that (a) the §1(b) basis is deleted, (b) the foreign registration information is entered into the Trademark database, and (c) the application is scheduled 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 re-assert the §1(b) basis;
(2) The applicant may request to add §44(e) and maintain the §1(b) basis. If the petition is granted, the examining attorney will be instructed to examine both the statement of use and the amendment to add §44(e) in accordance with standard examination procedures. 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). If an Office action regarding the statement of use 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 identify the outstanding refusals and/or requirements.
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 ensure that: (a) the §1(b) basis is deleted, (b) the dates of use are deleted, (c) the foreign registration information is entered into the Trademark database, and (d) the mark is scheduled for republication. 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 request to add §44(e) 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 in accordance with standard examination procedures and delete the §1(b) basis only if the §44(e) is accepted.
If the examining attorney accepts the §44(e) basis, the examining attorney must ensure that: (a) the §1(b) basis is deleted, (b) the dates of use are deleted, (c) the foreign registration information is entered into the Trademark database, and (d) the mark is scheduled 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) and address any additional issue(s) that arise during examination of the statement of use. 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 §44(e) basis.

Filing a petition to add or substitute a §44(e) 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 an outstanding refusal or requirement by informing the examining attorney that a petition has been filed to substitute §44(e). 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 only if the examining attorney accepts the §44(e) basis, 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.