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 an English translation, if necessary) with the petition. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01, 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 an English translation, if necessary) with the petition. See 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01, 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 in the U.S. application to conform to the scope of the identification 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. See 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; 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 an English translation, if necessary) with the petition. See 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01, 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(f); TMEP §1109.17), the applicant may elect not to perfect the use basis and instead 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.