T.M.E.P. § 806.02
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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. 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.
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. However, the applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services. 37 C.F.R. 2.34(b)(1).
806.02(b) Applicant May File Under Both §1(a) and §1(b) in a Single Application
An applicant may rely on both §1(a) and §1(b) in a single application. The applicant may not assert both a §1(a) and §1(b) basis for the identical goods or services in a single 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 multi-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 Office will publish the mark for opposition and will issue a notice of allowance (see TMEP §§1106 et seq.) 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 based on §1(b), unless the applicant files a request to divide. See TMEP §§1110 et seq. regarding requests to divide. 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. TMEP §806.02(d).
806.02(c) Examination of Specimens of Use in a Multi-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 Office 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 Multi-Basis Applications
If an applicant fails to respond to an Office action or notice of allowance pertaining to only one basis of a multi-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 et seq. regarding requests to divide. If the failure to respond was unintentional, the applicant may file a petition to revive. See TMEP §§1714 et seq. regarding petitions to revive.
806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Even if Application is Based on Both §44 and §1
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 (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 a §44(d) basis in addition to a §1 basis, the applicant may elect not to perfect a §44(e) basis and still retain the priority filing date. 37 C.F.R. §§2.35(b)(3) and (4).
If an applicant claims §44(d) in addition to another basis, the examining attorney must inquire whether the applicant wishes to retain §44(e) as a second basis for registration (based on the foreign registration that will issue from the application on which the applicant relied for priority). The examining attorney should advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and ask the applicant whether it wishes to perfect the §44(e) basis. This inquiry should be made in the first Office action, or by telephone if no Office action is issued. If the examining attorney is unable to reach the applicant by telephone, the examining attorney should issue an Office action requiring a copy of the foreign registration, advising applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquiring as to whether the applicant wishes to retain §44(e) as a second basis for registration.
If the applicant does not intend to assert a dual basis for registration, this should be indicated in an examiner's amendment and the mark should be approved for publication or issuance of a registration on the Supplemental Register, if appropriate. See TMEP §806.04(b) regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis.
If the applicant wishes to perfect the §44 basis, the examining attorney cannot approve the mark for publication for opposition or registration on the Supplemental Register until the applicant files a copy of the foreign registration. Therefore, if all issues are resolved or in condition for final action, the examining attorney must suspend action pending receipt of the foreign certificate. TMEP §1003.04.
806.02(g) Not Necessary to Repeat Allegation of Bona Fide Intention to Use Mark in Commerce in Multi-Basis ApplicationIf 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.