806.02 Multiple Bases
806.02(a) Procedure for Asserting More Than One Basis
In a §66(a) application, the applicant may not claim more than one basis. 37 C.F.R. §2.34(b).
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). The applicant must clearly indicate that more than one basis is claimed, and must separately list each basis, followed by the goods, services, or classes 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), 2.35(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 that class, the USPTO uses parentheses to indicate the particular 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
Exception: If an application has only §1(a) and §1(b) bases, and each class within the application has either a §1(a) or §1(b) basis (i.e., there are no dual bases within any class), basis notations are not required.
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 notation must always appear after the §44 basis notation. Further, when only some of the goods/services in a class share a dual basis under §44 and §1(b), the basis notation must appear with respect to those goods/services that share the dual bases and those that do not.
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) of the Trademark Act in the same trademark or service mark application, but not for identical goods or services. 37 C.F.R. §§2.34(b); 2.86(c). However, 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 in the same application. This may occur in either a single or multiple-class application. 37 C.F.R. §2.34(b).
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 then issue a notice of allowance (see TMEP §1106.01) if there is no successful opposition. The goods/services/classes 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/classes 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/classes are covered by which basis, the USPTO may defer examination of the specimens until the applicant identifies the goods/services/classes 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
In general, an application becomes abandoned if the applicant fails to take required action during the relevant statutory period, such as failure to respond to an Office action or to a notice of allowance within six months of the date of issuance. 15 U.S.C §§1051(d)(4), 1062(b), 37 C.F.R §2.65(a), (c). In certain situations, if all refusals and/or requirements are expressly limited to certain goods/services, and the applicant fails to respond, or to respond completely, to an Office action, the application will be abandoned only as to those particular goods/services. See TMEP §718.02(a). However, if an application has multiple bases, it is not always appropriate to issue a partial-abandonment advisory because the Office will not abandon one of the bases in an application for failure to respond to an Office action. The applicant must submit an amendment deleting the basis or a request to divide, if appropriate. The following sections discuss when it is and is not appropriate to issue a partial-abandonment advisory in a multiple-basis application.
806.02(d)(i) Abandonment for Failure to Respond to an Office Action
When an applicant fails to respond to an Office action in which a refusal or requirement was specifically limited to particular goods/services/classes, the examining attorney will abandon the application in part as to the particular goods/services/classes to which the refusal or requirement is limited. To the extent those goods/services/classes are the only goods/services/classes supported by one basis of multiple filing bases, the filing basis corresponding to such goods/services/classes will also be deleted from the application.
Example: An application includes "pants" (based on §1(a)) in Class 25 and "toys" (based on §1(b)) in Class 28. The examining attorney issues an Office action that clearly and explicitly limits a refusal or requirement to Class 28 and includes a partial-abandonment advisory, if otherwise appropriate. If the applicant does not respond, the examining attorney will issue an examiner’s amendment deleting (abandoning) Class 28 and the §1(b) basis. The application will be approved for publication with a basis of §1(a). If no opposition is filed, the application will proceed to issuance of a registration of the mark for "pants."
Example: An application includes "pants" (based on §1(a)) and "shoes" (based on §1(b)) in Class 25. The examining attorney issues an Office action that clearly and explicitly limits a refusal or requirement to the "pants" in Class 25 and includes a partial-abandonment advisory, if otherwise appropriate. If the applicant does not respond, the examining attorney will issue an examiner’s amendment deleting (abandoning) "pants" and the §1(a) basis. The application will be approved for publication with a basis of §1(b). If no opposition is filed, a notice of allowance for "shoes" will be issued.
See TMEP §718.02(a) regarding failure to respond to a partial refusal or requirement.
However, if the different bases apply to all goods/services within a class or to all classes, a partial-abandonment advisory must not be given. The failure to respond will result in abandonment of the entire application.
Example: An application includes "shoes and shirts" (based on §44(e) and §1(b)) in Class 25, but the foreign registration does not cover "shoes." When issuing a refusal of the §44(e) basis for "shoes," the examining attorney must not include a partial-abandonment advisory. The applicant must submit an amendment specifically deleting the §44(e) basis if it wishes to go forward under the §1(b) basis alone.
Example: An application includes "shoes and shirts" in Class 25 and "dolls" in Class 28. Both classes are based on §44(e) and §1(a). If a refusal must be issued regarding the specimen of use for Class 28, the examining attorney must not include a partial-abandonment advisory. The applicant must submit an amendment specifically deleting the §1(a) basis as to Class 28 if it wishes to go forward under the §44(e) basis alone.
If the failure to respond to the Office action was unintentional, the applicant may file a petition to revive. See TMEP §§1714–1714.01(g) regarding petitions to revive.
806.02(d)(ii) Abandonment for Failure to Respond to a Notice of Allowance
If an applicant fails to respond to a notice of allowance that applies to some or all of the goods and/or services in a multiple-basis application, the failure to respond will result in abandonment of the entire application. The Office will not partially abandon the goods/services to which the §1(b) basis applies, nor will it abandon the §1(b) basis as it applies to any or all goods/services in the application. 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), (b)(4). If an applicant who elects not to perfect the §44(e) basis later wishes to add or substitute §44(e) as a basis after the 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); see TMEP §806.03(j).
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.