T.M.E.P. § 806.03
Amendments to Add or Substitute a Basis

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

For more information on trademark law, please see the Trademark Section of BitLaw.

Previous Section (§806.02) | Next Section (§806.04)

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) et seq. 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 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)

If a §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. The Office will presume that the applicant had a continuing valid basis, because the applicant had at least a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. 2.35(b)(3).

When amending from §1(a) to §1(b), the applicant must submit a verified statement that the applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods/services since the application filing date. 15 U.S.C. 1051(b)(3)(B); 37 C.F.R. 2.34(a)(2).

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

Once an applicant has filed a statement of use in a §1(b) application, the applicant may not withdraw the statement of use. 37 C.F.R. 2.88(g); TMEP §1109.17.

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, 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). 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).

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 under §1(c) or §1(d) of the Trademark Act. 37 C.F.R. 2.35(b)(8). See TMEP §§1103 , 1104 and 1109 et seq. 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 has been in use in commerce since 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); 37 C.F.R. §§2.34(a)(1)(i), 2.34(a)(1)(ii), 2.34(a)(1)(iii), and 2.59(a); 2.71(c)(1); TMEP §§806.01(a) , 806.03(i) , 903.01 , 903.02 , 903.05 and 904.09.

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 et seq. 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. 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 §44(d) as a basis 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) et seq. 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 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 Office will presume that there was a continuing valid basis for registration. 37 C.F.R. 2.35(b)(3).

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

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 Office 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 has been in use in commerce on or in connection with the goods/services covered by the §1(a) basis since 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 had a bona fide intention to use the mark in commerce on or in connection with the goods/services listed in the application since 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. 2.33(a).

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

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 after issuance of a notice of allowance.)

If the examining attorney accepts the new basis, the mark must be republished. 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 amendments to the basis after issuance of a notice of allowance.

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.

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 after issuance of a notice of allowance.

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 a §44 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 petition should indicate whether applicant wants to maintain the §1(b) basis. The applicant has three options:

(1) Applicant may delete the §1(b) basis and substitute §44. If the Director grants the petition and the examining attorney accepts the §44 basis, the examining attorney will (1) ensure that the §1(b) basis is deleted from the Trademark Reporting and Monitoring ("TRAM") System; and (2) approve the mark for republication. If registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44 basis, the examining attorney will ensure that the §1(b) basis is deleted from TRAM; and (2) issue an Office action notifying the applicant of the reason(s). The applicant cannot later re-assert the §1(b) basis;

(2) Applicant may add §44 and retain the §1(b) basis. If the Director grants the petition and the examining attorney accepts the §44 basis, the application will be republished with a dual basis and, if registration of the mark is not opposed, a notice of allowance will issue. If the examining attorney does not accept the §44 basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment and proceed under §1(b); or

(3) Applicant may add §44 and request that the §1(b) basis be deleted if the examining attorney accepts the §44 basis. If the Director grants the petition and the examining attorney accepts the §44 basis, the examining attorney will (1) ensure that the §1(b) basis is deleted from TRAM; and (2) approve the mark for republication. If the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44 basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment and proceed under §1(b).

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

Amendments Adding or Substituting a §44 Basis

An applicant who wants to add a §44 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 petition should indicate whether applicant wants to delete the §1(b) basis. The applicant has three options:

(1) The applicant may delete the §1(b) basis and substitute §44. If the petition is granted, the notice of allowance will be cancelled, the §1(b) basis will be deleted from the application, and the application will be sent to the examining attorney for examination of the §44 basis. If the examining attorney accepts the §44 basis, the mark will be republished and, if registration of the mark is not 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 add §44 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 basis during examination of the statement of use; or

(3) An applicant does not have the option of adding §44 and maintaining a dual basis. However, the applicant may add a §44 basis and request that the §1(b) basis be deleted if the examining attorney accepts the §44 basis. If the Director grants the petition and the examining attorney accepts the §44 basis, the examining attorney will (1) ensure that the §1(b) basis is deleted from TRAM; and (2) approve the mark for republication. If the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44 basis, the §1(b) basis will be maintained. The examining attorney will call the applicant and notify the applicant that the §44 basis is unacceptable and that an Office action will issue during examination of the statement of use. An appropriate note to the file must be made. The application will then await the filing of the statement of use.

The Director will not grant a petition to add §44 and retain the §1(b) basis unless a statement of use is filed with the petition, because examination of the §44 basis could substantially delay prosecution of the application. If the examining attorney found the §44 basis unacceptable, the notice of allowance would have to be cancelled in order to issue an Office action. The notice of allowance cannot be cancelled or reissued 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.

Amendments That Apply to Less Than All the Goods/Services

The Director will not grant a petition to amend the basis if the amendment does not apply to all the goods/services covered by the §1(b) basis, unless the applicant concurrently files a request to divide out the goods/services to which the amendment applies. See TMEP §§1110 et seq. regarding requests to divide.

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 and 37 C.F.R. 7.31. 37 C.F.R. 2.35(a). See TMEP §1904.09 regarding transformation.