806    Filing Basis

A filing basis is the statutory basis for filing an application for registration of a mark in the United States.  An applicant must specify and meet the requirements of one or more bases.  37 C.F.R. §2.32(a)(5).  There are five filing bases:  (1) use of a mark in commerce under §1(a) of the Trademark Act, 15 U.S.C. §1051(a); (2) bona fide intention to use a mark in commerce under §1(b) of the Act, 15 U.S.C. §1051(b); (3) a claim of priority, based on an earlier-filed foreign application under §44(d) of the Act, 15 U.S.C. §1126(d); (4) ownership of a registration of the mark in the applicant’s country of origin under §44(e) of the Act, 15 U.S.C. §1126(e); and (5) extension of protection of an international registration to the United States, under §66(a) of the Act, 15 U.S.C. §1141f(a).  37 C.F.R. §2.34.

An applicant is not required to specify the basis for filing to receive a filing date.  Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1840 (TTAB 2009).  If a §1 or §44 application does not specify a basis, the examining attorney must require in the first Office action that the applicant specify the basis for filing and submit all the elements required for that basis.  If the applicant timely responds to the first Office action, but fails to specify a basis for filing, or fails to submit all the elements required for a particular basis, the examining attorney will issue a final Office action, if the application is otherwise in condition for final action.

In a §66(a) application, the basis for filing will have been established in the international registration on file at the IB.

See 37 C.F.R. §2.34 and TMEP §§806.01–806.01(e) for a list of the requirements for each basis.

806.01   Requirements for Establishing a Basis

The requirements for establishing a basis are set forth in TMEP §§806.01(a)–806.01(e).  If these requirements are not met in the original application, the examining attorney will require the applicant to comply with them in the first Office action.

806.01(a)   Use in Commerce - §1(a)

Under 15 U.S.C. §1051(a) and 37 C.F.R. §2.34(a)(1), to establish a basis under §1(a) of the Trademark Act, the applicant must:

  • (1)          Submit a verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application.  15 U.S.C. §1051(a)(3)(C).  If this verified statement is not filed with the initial application, the verified statement must also allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date (37 C.F.R. §2.34(a)(1)(i));
  • (2)          Specify the date of the applicant’s first use of the mark anywhere on or in connection with the goods or services (37 C.F.R. §2.34(a)(1)(ii); TMEP §903.01);
  • (3)          Specify the date of the applicant’s first use of the mark in commerce as a trademark or service mark (37 C.F.R. §2.34(a)(1)(iii); TMEP §903.02); and
  • (4)          Submit one specimen for each class, showing how the applicant actually uses the mark in commerce (37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §§904–904.07(b)).

The Trademark Act defines "commerce" as commerce which may lawfully be regulated by Congress, and "use in commerce" as the bona fide use of a mark in the ordinary course of trade.  15 U.S.C. §1127; 37 C.F.R. §2.34(c).  See TMEP §§901–901.05.

An applicant may claim both use in commerce under §1(a) of the Act and intent-to-use under §1(b) of the Act as a filing basis in the same application, but may not assert both §1(a) and §1(b) for the identical goods or services in the same application.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

An applicant may not claim a §1(a) basis unless the mark was in use in commerce on or in connection with all the goods or services covered by the §1(a) basis as of the application filing date.  37 C.F.R. §2.34(a)(1)(i).  Cf. E.I. du Pont de Nemours & Co. v. Sunlyra Int’l, Inc., 35 USPQ2d 1787, 1791 (TTAB 1995).

If the applicant claims use in commerce in addition to another filing basis, but does not specify which goods or services are covered by which basis, the USPTO may defer examination of the specimen(s) until the applicant identifies the goods or services for which use is claimed.  TMEP §806.02(c).

806.01(b)   Intent-to-Use - §1(b)

In an application based on 15 U.S.C. §1051(b), the applicant must submit a verified statement that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application.  15 U.S.C. §1051(b)(3)(B).  If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services as of the filing date of the application.  37 C.F.R. §2.34(a)(2).

Prior to registration, the applicant must file an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d)) that states that the applicant is using the mark in commerce on or in connection with the goods or services, includes dates of use and a filing fee for each class, and includes one specimen evidencing such use for each class.  See 37 C.F.R. §2.76 and TMEP §§1104–1104.11 regarding amendments to allege use, and 37 C.F.R. §2.88 and TMEP §§1109–1109.18 regarding statements of use.

Once an applicant claims a §1(b) basis for any or all of the goods or services, the applicant may not amend the application to seek registration under §1(a) of the Act for those goods or services unless the applicant files an allegation of use under §1(c) or §1(d) of the Act.  37 C.F.R. §2.35(b)(8).

See TMEP Chapter 1100 for additional information about intent-to-use applications.

806.01(c)   Foreign Priority - §44(d)  

Section 44(d) of the Act provides a basis for receipt of a priority filing date, but not a basis for publication or registration.  Before the application can be approved for publication, or for registration on the Supplemental Register, the applicant must establish a basis under §1(a), §1(b), or §44(e) of the Act.  37 C.F.R. §2.34(a)(4)(iii); TMEP §1003.03.  If the applicant claims a §1(b) basis, the applicant must file an allegation of use before the mark can be registered.  See TMEP §806.01(b) regarding the requirements for a §1(b) basis.

Under 15 U.S.C. §1126(d) and 37 C.F.R. §2.34(a)(4), the requirements for receipt of a priority filing date based on a previously filed foreign application are:

    • (1)          The applicant must file a claim of priority within six months of the filing date of the foreign application.  37 C.F.R. §§2.34(a)(4)(i) and 2.35(b)(5);
    • (2)          The applicant must:  (a) specify the filing date, serial number, 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. §§2.34(a)(4)(i)(A) and (B).  See also Paris Convention Article 4(D); and
    • (3) The applicant must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application.  15 U.S.C. §1126(d)(2).  This allegation is required even if use in commerce is asserted in the application.  TMEP §806.02(e).  If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the filing date of the application.  37 C.F.R. §2.34(a)(4)(ii).

The scope of the goods/services covered by the §44 basis in the United States application cannot exceed the scope of the goods/services in the foreign application or registration.  37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).

If an applicant properly claims a §44(d) basis in addition to another basis, the applicant may retain the priority filing date without perfecting the §44(e) basis.  37 C.F.R. §§2.35(b)(3) and (4).  See TMEP §806.04(b) regarding processing an amendment electing not to perfect a §44(e) basis, and TMEP §806.02(f) regarding the examination of applications that claim §44(d) in addition to another basis.

See TMEP §§1003–1003.08 for further information about §44(d) applications.

806.01(d)   Foreign Registration - §44(e)

Under 15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3), the requirements for establishing a basis for registration under §44(e), relying on a registration granted by the applicant’s country of origin, are:

  • (1) The applicant must submit a true copy, a photocopy, a certification, or a certified copy of the registration in the applicant’s country of origin, and, if the foreign registration or other certification is not in English, the applicant must provide a translation of the document.  37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b);
  • (2) The application must include the applicant’s verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services.  15 U.S.C. §1126(e).  This allegation is required even if use in commerce is asserted in the application.  TMEP §806.02(e).  If the verified statement is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.  37 C.F.R. §2.34(a)(3)(i); and
  • (3) The applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002–1002.05.

If the applicant does not submit a certification or a certified copy of the registration from the country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect.  See TMEP §1004.01.

The scope of the goods/services covered by the §44 basis in the United States application cannot exceed the scope of the goods/services in the foreign registration.  37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).

An application may be based on more than one foreign registration.  If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished.  TMEP §1004.02.  See TMEP §§806.03–806.03(l) regarding amendments to add or substitute a basis.

See TMEP §§1004–1004.02 for further information about §44(e) applications.

806.01(e)   Extension of Protection of International Registration - §66(a)

Section 66(a) of the Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States.  See 37 C.F.R. §2.34(a)(5).  The request must include a declaration of a bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration.  The verified statement is part of the international registration on file at the IB.  37 C.F.R. §2.33(e).  The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO.  Generally, the examining attorney need not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the initial verification of the application.  However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration.  See TMEP §804.05.

A §66(a) applicant cannot change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c).  37 C.F.R. §§2.34(b)(3) and 2.35(a).  See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application can be transformed into an application under §1 or §44.

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO.  It cannot be added or substituted as a basis in an application originally filed under §1 or §44.

Under 15 U.S.C. §1141g, Madrid Protocol Article 4(2), and 37 C.F.R. §7.27, the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:

  • (1) The request for extension of protection contains a claim of priority;
  • (2) The request for extension of protection specifies the filing date, serial number, and the country of the application that forms the basis for the claim of priority; and
  • (3)   The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than six months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).

See Common Regs., Rule 9(4)(a)(iv); Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol (2014) ("Guide to International Registration"), Para. B.II.07.32.

806.02   Multiple Bases

806.02(a)   Procedure for Asserting More Than One Basis  

In a §66(a) application, the applicant cannot claim more than one basis.  37 C.F.R. §2.34(b)(3).

In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfies all requirements for each basis claimed.  However, the applicant may not claim both §1(a) and §1(b) for identical goods or services in the same application. 37 C.F.R. §2.34(b)(1).  The applicant must clearly indicate that more than one basis is claimed, and must separately list each basis, followed by the goods or services to which that basis applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.  37 C.F.R. §§2.34(b)(2) and 2.35(b)(6).

Example:  Based on use - SHIRTS AND COATS, in Class 25; Based on intent to use - DRESSES, in Class 25.

The applicant may assert different bases for different classes, and may also assert different bases as to different goods or services within a class.

When a single class has different bases for goods or services within the same class, the USPTO uses parentheses to indicate the specific basis for specific goods or services. When entering this information into the Trademark database for goods and services under §1(a) or §1(b), the examining attorney or legal instruments examiner ("LIE") must refer to "use in commerce" or "intent to use" rather than referring to the statutory citation. However, for goods and services under §44, the statutory citation must be identified.

Example:  Class 025: (Based on Use in Commerce) Pants; (Based on Intent to Use) Shirts

Example: Class 025: (Based on 44(e)) Pants

When all bases do not apply to all classes in a multiple-basis, multiple-class application, each class must include a basis notation.

Example:

Class 016: (Based on 44(e)) Greeting cards and postcards

Class 025: (Based on Use in Commerce) Shoes; (Based on Intent to Use) Shirts

Class 041: (Based on 44(e)) Entertainment, namely, live performances by a musical band

The applicant may claim a §44 basis in addition to either a §1(a) or a §1(b) basis for the same goods or services.  When an application has a §44 and §1(b) dual basis for the same goods or services, the §1(b) basis information must always appear after the §44 basis information.

Example: Class 005: (Based on 44(e)) (Based on Intent to Use) Gene therapy products, namely, pharmaceutical preparation vectors for use in gene therapy; (Based on Intent to Use) Pharmaceutical preparations containing nucleic acids for use in the treatment of viral and bacterial infections

806.02(b)   Applicant May File Under Both §1(a) and §1(b) in the Same Application

An applicant may rely on both §1(a) and §1(b) in the same application.  The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in the same application, but the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services.  This can occur in either a single or multiple-class application.  37 C.F.R. §2.34(b)(1).

When the applicant asserts both §1(a) and §1(b) as bases for registration in the same application, the USPTO will publish the mark for opposition and will issue a notice of allowance (see TMEP §1106.01) if there is no successful opposition.  The goods/services for which a §1(a) basis is asserted will remain in the application pending the filing and approval of a statement of use for the goods/services based on §1(b), unless the applicant files a request to divide.  See TMEP §§1110–1110.11(a) regarding requests to divide applications.  If the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use and notifies the examining attorney that the request has been filed.  TMEP §806.02(d).

806.02(c)   Examination of Specimens of Use in a Multiple-Basis Application  

If the applicant claims use in commerce in addition to another basis, but does not specify which goods/services are covered by which basis, the USPTO may defer examination of the specimens until the applicant identifies the goods/services for which use is claimed.  A proper examination of specimens requires consideration of the particular goods/services on or in connection with which the mark is used.

806.02(d)   Abandonment of Multiple-Basis Applications

If an applicant fails to respond to an Office action or notice of allowance pertaining to only one basis of a multiple-basis application, the failure to respond will result in abandonment of the entire application, unless the applicant files a request to divide under 37 C.F.R. §2.87 and notifies the examining attorney that the request has been filed.  See TMEP §§1110–1110.11(a) regarding requests to divide applications.  If the failure to respond was unintentional, the applicant may file a petition to revive.  See TMEP §§1714–1714.01(g) regarding petitions to revive. 

806.02(e)   Allegation of Bona Fide Intention to Use Mark in Commerce Required Even if Application Is Based on Both §44 and §1(a)

Any application filed under §44(d) or §44(e) must include a verified statement that the applicant has a bona fide intention to use the mark in commerce even if §1(a) (use in commerce) is asserted as an additional filing basis.  Cf. In re Paul Wurth S.A., 21 USPQ2d 1631, 1633 (Comm’r Pats. 1991).

If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce.

806.02(f)   Section 44(d) Combined With Other Bases

If an applicant properly claims priority under §44(d), 15 U.S.C. §1126(d),  in addition to a §1 basis, the applicant may elect not to perfect the §44(e) basis (based on the foreign registration that will issue from the application on which the applicant relies for priority) and still retain the priority filing date.  37 C.F.R. §§2.35(b)(3) and (4).

The examining attorney must advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquire whether the applicant wishes to retain §44(e) as a second basis for registration.  See TMEP §806.04(b) regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis, and TMEP §1003.04(b) regarding the procedures to follow when an applicant claims priority under §44(d) in addition to another basis.

806.02(g)   Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multiple-Basis Application

If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce.  Therefore, when an applicant adds or substitutes §1(b) or §44 as a filing basis, it is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if there is already one in the record with respect to the goods or services covered by the new basis.

806.03   Amendments to Add or Substitute a Basis

806.03(a)   When Basis Can be Changed

Section 1 or §44 Application - Before Publication.  The applicant may add or substitute a basis before publication, provided that the applicant meets all requirements for the new basis.  37 C.F.R. §2.35(b)(1).

Section 1 or §44 Application - After Publication.  In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must first petition the Director to allow the examining attorney to consider the amendment.  If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished.  37 C.F.R. §2.35(b)(2).  See TMEP §§806.03(j)–806.03(j)(iii) for further information.

Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a).  See Trademark Trial and Appeal Board Manual of Procedure  ("TBMP") §514.

Section 66(a) Application.  In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31.  37 C.F.R. §2.35(a); TMEP §806.03(k).

806.03(b)   Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period

An applicant may add or substitute a §44(d) basis only during the six-month priority period following the filing date of the foreign application.  37 C.F.R. §2.35(b)(5).  See TMEP §806.02(f) regarding §44(d) combined with another basis.

806.03(c)   Amendment From §1(a) to §1(b)

In an application filed under §1(a), if the §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis and the application will retain the original filing date.  The USPTO will presume that the applicant had a continuing valid basis unless there is contradictory evidence in the record.  37 C.F.R. §2.35(b)(3).

Although there is a presumption of a continuing valid basis, when amending from §1(a) to §1(b), the applicant must confirm the presumption by submitting 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, and that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods/services as of the application filing date.  15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2).

If the applicant wishes to substitute §1(b) as a basis after publication of an application filed under §1(a) that is not the subject of an inter partes proceeding before the TTAB, the applicant must petition the Director to allow the examining attorney to consider the amendment.  37 C.F.R. §2.35(b)(2). In a multiple-basis application, if a notice of allowance has issued for those goods/services based on §1(b), the petition will not be granted unless a request to divide the application is submitted with the petition. The goods/services to be amended from §1(a) to §1(b) must be divided out in order to process the amendment because republication is required. (37 C.F.R. §2.35(b)(2)). The petitioner may include all the goods/services based on §1(a) in the child application or only those to which the amendment to §1(b) applies. If dividing within a class, in addition to the fee for filing a request to divide, an application filing fee is required. See 37 C.F.R. §2.87 and TMEP §§1110–1110.11(a) regarding requests to divide applications.

The amendment of an application that is the subject of an inter partes proceeding before the TTAB is governed by 37 C.F.R. §2.133(a).

Note that in a §1(b) application, once an applicant has filed a statement of use, the applicant may not withdraw the statement of use.  37 C.F.R. §2.88(g); TMEP §1109.17.  Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed.  See TMEP § 1104.11 regarding withdrawing an amendment to allege use.

See TMEP §§806.03(j)–806.03(j)(iii) regarding amendment of the basis after publication.

806.03(d)   Amendment From §44 to §1(b)

An applicant may amend the basis from §44 to §1(b).  The USPTO will presume that the applicant had a continuing valid basis, unless there is contradictory evidence in the record, because the applicant had a bona fide intention to use the mark in commerce as of the application filing date.  37 C.F.R. §2.35(b)(3).  Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1789-90 (TTAB 2006).  It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis.  See TMEP §806.03(i).

Applicant must clearly indicate whether it wants to:  (1) add the §1(b) basis and maintain the §44 basis; or (2) replace the §44 basis with the §1(b) basis.

In a §44(d) application, the applicant may substitute §1(b) as a basis and still retain the priority filing date.  37 C.F.R. §§2.35(b)(3) and (4); TMEP §806.03(h).  If the applicant chooses to add the §1(b) basis and maintain the §44 basis, the examining attorney cannot approve the mark for publication until the applicant files a copy of the foreign registration.  See TMEP §§806.02(f), 1003.04(b).

See TMEP §806.03(j) regarding amendment of the basis after publication.

806.03(e)   Allegation of Use Required to Amend From §1(b) to §1(a)

An applicant who claims a §1(b) basis for any or all of the goods or services may not amend the application to seek registration under §1(a) of the Act for those goods or services, unless the applicant files an allegation of use.  37 C.F.R. §2.35(b)(8).  See TMEP §§1103, 1104–1104.11, and 1109–1109.18 regarding allegations of use.

806.03(f)   Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application

An applicant can add or substitute a basis only if the applicant meets all the requirements for the new basis.  37 C.F.R. §2.35(b)(1).  Therefore, an applicant may not amend a §44 application to claim a §1(a) basis unless the applicant:  (1) verifies that the mark is in use in commerce on or in connection with the goods or services listed in the application, and that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; (2) provides a specimen, with a verified statement that the specimen was in use in commerce as of the application filing date; and (3) supplies the date of first use anywhere and the date of first use in commerce of the mark.  15 U.S.C. §§1051(a)(1)–1051(a)(4); 37 C.F.R. §§2.34(a)(1), 2.59(a), and 2.71(c)(1); TMEP §§806.01(a), 806.03(i), 903.01, 903.02, 903.04, and 904.05.  

If an applicant began using the mark in commerce after the application filing date, the applicant cannot add or substitute §1(a) as a basis.  However, the applicant may add or substitute §1(b) as a basis, and concurrently file an amendment to allege use.  See TMEP §806.03(d) regarding amendment of the basis from §44 to §1(b), and TMEP §§1104–1104.11 regarding amendments to allege use.

806.03(g)   Amendment From §1(b) to §44

An applicant may amend the basis from §1(b) to §44, if the applicant meets the requirements of §44 as of the filing date of the amendment.  It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis.  See TMEP §806.03(i).

When an applicant adds §44(e) as a basis, the applicant must submit a copy of the foreign registration (and a translation, if necessary) with the amendment.  37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01 and 1004.01(b).

The applicant may add a claim of priority under §44(d) only within the six-month priority period following the filing date of the foreign application.  37 C.F.R. §2.35(b)(5).  See TMEP §806.02(f) regarding §44(d) combined with another basis.

If the amendment is filed before publication, the applicant must clearly indicate whether it wants to:  (1) add the §44 basis and maintain the §1(b) basis; or (2) replace the §1(b) basis with the §44 basis.  If the applicant chooses to add §44 and maintain the §1(b) basis, the application will proceed to publication with a dual basis.  See TMEP §§806.03(j)–806.03(j)(iii) regarding amendment of the basis after publication.

806.03(h)   Effect of Substitution of Basis on Application Filing Date

When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis.  The applicant will retain the original filing date, provided that the applicant has had a continuing valid basis for registration since the application filing date.  Unless there is contradictory evidence in the record, the USPTO will presume that there was a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3); Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1841 (TTAB 2009); Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1789-1790 (TTAB 2006).

If the applicant properly asserts a claim of priority under §44(d) during the six-month priority period, the applicant will retain the priority filing date, no matter which basis for registration is ultimately established, provided that the applicant has had a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3) and (4); TMEP §§806.02(f), 1003, and 1003.04(b).

If there is no continuing valid basis, the application is void, and registration will be refused.  In this situation, the applicant cannot amend the filing date, and the USPTO will not refund the filing fee.  See TMEP §205.

806.03(i)   Verification of Amendment Required

An applicant who adds or substitutes use in commerce under §1(a) as a basis must verify that the mark is in use in commerce on or in connection with the goods/services covered by the §1(a) basis, and that the mark was in use in commerce on or in connection with these goods/services as of the filing date of the application.  37 C.F.R. §2.34(a)(1)(i).

An applicant who adds or substitutes §1(b), §44(d), or §44(e) as a basis must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services covered by the amendment, and that the applicant had a bona fide intention to use the mark in commerce on or in connection with these goods/services as of the filing date of the application, unless a verified statement of the applicant’s bona fide intention to use the mark in commerce has already been filed with respect to all the goods/services covered by the new basis.  37 C.F.R. §§2.34(a)(2), 2.34(a)(3)(i), and 2.34(a)(4)(ii).

Example:  If a §44 application originally included a verified statement that the applicant had a bona fide intention to use the mark in commerce, it is not necessary to repeat this statement if the applicant later adds or substitutes a §1(b) basis for the goods/services covered by the §44 basis.

See TMEP §804.04 regarding persons who may sign a verification on behalf of an applicant under 37 C.F.R. §2.193(e)(1).

806.03(j)   Petition to Amend Basis After Publication - §1 or §44 Application

37 C.F.R. §2.35(b)(2) 

After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, but only with the express permission of the Director, after consideration on petition.  Republication will be required.  The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by §2.133(a).

In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment.  37 C.F.R. §2.35(b)(2).  Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a) (see TBMP §514).

When granting a petition to amend the basis, the Director will restore jurisdiction to the examining attorney to consider the amendment, except in a §1(b) application in which the notice of allowance has issued.  See TMEP §806.03(j)(ii) regarding amendment of the basis of a §1(b) application after issuance of a notice of allowance and before filing of statement of use.

If the examining attorney accepts the new basis, the mark must be republished to provide notice to third parties who may wish to oppose registration based on issues that arise in connection with the new basis.  37 C.F.R. §2.35(b)(2).

If the examining attorney does not accept the new basis, he or she will issue an Office action using standard examination procedures except in a §1(b) application in which a notice of allowance has issued and no statement of use has been filed.  See TMEP §806.03(j)(ii) regarding amendment of the basis of a §1(b) application after issuance of a notice of allowance and before filing of statement of use.   

Any petition to change the basis must be filed before issuance of the registration.  To avoid the possible issuance of a registration without consideration of the petition, an applicant should submit the petition no later than six weeks after publication.

The Director will not grant a petition to amend the basis after publication if the amendment could substantially delay prosecution of the application.  For example, the Director will deny petitions to amend the basis after publication in the following situations:

  • Once the Director has granted a petition to amend the basis after publication, the Director will not thereafter grant a second petition to amend the basis with respect to the same application.
  • If an applicant had previously deleted a §1(b) basis after a notice of allowance had issued, the Director will not grant a petition to re-assert §1(b) as a basis for registration.  This would require issuance of a new notice of allowance and could result in 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).

See TMEP §806.03(j)(i) regarding amendment of the basis in a §1(b) application between publication and issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendment of the basis in a §1(b) application after issuance of a notice of allowance and before filing of statement of use.

Petitions to amend the basis after publication are processed by the Office of Petitions, which is part of the Office of the Deputy Commissioner for Trademark Examination Policy.

806.03(j)(i)   Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance

An applicant who wants to add or substitute a §44(e) basis to a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment.  37 C.F.R. §2.35(b)(2); TMEP §806.03(j).  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 delete or retain the §1(b) basis.  The applicant has two options:

  • (1) Applicant may request to delete the §1(b) basis and substitute §44(e) 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 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 §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 may elect to withdraw the amendment adding the §44(e) basis and proceed under §1(b) as the sole basis without republication; or
  • (2) Applicant may request to add §44(e) and retain the §1(b) basis. 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 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 notice of allowance 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 may elect to withdraw the amendment adding the §44(e) basis and proceed under §1(b) as the sole basis without republication.

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 file a "Petition to Change the Filing Basis After Publication," available at http://www.uspto.gov/trademarks/teas/petition_forms.jsp, 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 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 goods/services/classes to which the amendment applies or (2) an amendment deleting the goods/services/classes not covered by the amendment. See 37 C.F.R. §2.87 and TMEP §§1110–1110.11 regarding requests to divide. Also, if it is otherwise necessary to amend the identification of goods/services in the U.S. application to conform to the scope of the goods/services identified in the foreign registration, the applicant should submit the amendment with the petition to expedite processing.

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.

Therefore, the applicant has three options:

  • (1) Request to delete the §1(b) basis and substitute §44(e). 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. However, if the record indicates that the foreign registration has expired or will expire within six months, the examining attorney must require proof of renewal. If the applicant states that renewal is pending in the foreign country, the examining attorney must suspend the application pending receipt of proof of renewal. See TMEP §1004.01(a) regarding the status of the foreign registration. 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) Request to add §44(e) and perfect the §1(b) basis by filing a statement of use. The applicant may request to add §44(e) and perfect the §1(b) basis by filing a statement of use with the petition.  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 of 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. However, if the record indicates that the foreign registration has expired or will expire within six months, the examining attorney must require proof of renewal. If the applicant states that renewal is pending in the foreign country, the examining attorney must suspend the application pending receipt of proof of renewal. See TMEP §1004.01(a) regarding the status of the foreign registration. 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 to registration under §1(a) as the sole basis without republication. If the statement of use is not acceptable, but the §44(e) basis is, the applicant may elect to proceed under §44(e) as the sole basis with republication.
  • (3) Request to substitute §44(e) but retain the §1(b) basis until the §44(e) basis is accepted. The applicant may request to substitute 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 retain 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. 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 examining attorney does not accept the §44(e) basis, or if the foreign registration has expired or will expire within six months, the examining attorney is unable to issue an Office action since the notice of allowance is still pending. Therefore, the examining attorney will attempt to 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 must also enter an appropriate Note to the File in the record that states the reason(s) why the amendment is not acceptable. If the examining attorney is unable to reach the applicant, no further action will be taken on the amendment until a statement of use is filed or the applicant contacts the examining attorney with a request to delete the §1(b) basis so an Office action can be issued.

See also 37 C.F.R. §2.77 and TMEP §§1107–1107.01.

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.

If the examining attorney accepts the §44(e) basis and the applicant is not perfecting the statement of use, 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 §§711–711.02 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).  The applicant must also respond to any outstanding issues regarding the statement of use unless the applicant no longer intends to perfect the statement of use.

806.03(k)   Basis Cannot be Changed in §66(a) Application

In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31.  37 C.F.R. §2.35(a).  See TMEP §§1904.09–1904.09(b) regarding transformation.

806.03(l)   §66(a) Basis Cannot be Added to §1 or §44 Application

Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO.  It cannot be added or substituted as a basis in an application originally filed under §1 or §44.

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 any goods or services 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.

806.05   Review of Basis Prior to Publication or Issue

If an application claims more than one basis, the examining attorney must ensure that the record clearly and accurately shows which goods are covered by which basis before approving the application for publication for opposition or registration on the Supplemental Register.  If there are any errors, the examining attorney must ensure that the Trademark database is corrected.

See TMEP § 806.02(a) for information regarding entering multiple bases in the Trademark database when the applicant asserts different bases for different classes, or different bases as to different goods or services within a class.