806.03(j)(ii)   Amending the Basis of a §1(b) Application Between Issuance of Notice of Allowance and Filing of Statement of Use

An applicant who wants to add or substitute a §44(e) basis in a §1(b) application after issuance of the notice of allowance and before 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).

The petition must 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 Office of Petitions will have the notice of allowance cancelled and instruct the examining attorney 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 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 request to 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 after issuance of the notice of allowance 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 §44(e) basis is unacceptable, in order to issue an Office action, the notice of allowance would have to be cancelled.  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. If the examining attorney accepts the §44(e) basis and the statement use, the examining attorney must ensure that: (a) the foreign registration information is entered into the Trademark database and (b) the application is scheduled for republication with a dual basis. If registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis or the statement of use, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment adding the §44(e) basis and, if the statement of use is acceptable, proceed under §1(b) as the sole basis without republication; or
  • (3) The applicant may request to add a §44(e) basis and request that the §1(b) basis be deleted only 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 petition is granted, the examining attorney will be instructed to examine the §44(e) basis in accordance with standard examination procedures and to delete the §1(b) basis if the §44(e) basis is accepted. If the examining attorney accepts the §44(e) basis, the examining attorney must ensure that: (a) the notice of allowance is cancelled, (b) the §1(b) basis is deleted, (c) the foreign registration information is entered into the Trademark database, and (d) the application 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 is unable to issue an Office action since the notice of allowance is still pending. Therefore, 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 the notice of allowance can be cancelled and 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 to §44(e), 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 to §44(e) after issuance of the notice of allowance and before the filing of a statement of use, if the foreign registration does not include all of the classes covered by the §1(b) basis, unless the applicant concurrently files:  (1) a request to divide out the classes to which the amendment applies; or (2) an amendment deleting the classes not covered by the amendment.  See 37 C.F.R. §2.87 and TMEP §§1110 et seq. regarding requests to divide.