T.M.E.P. § 806.04
Deleting 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.

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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). When the applicant deletes a basis, the applicant must also delete any goods or services covered solely by the deleted basis. 37 C.F.R. 2.35(b)(7).

To expedite processing, the Office recommends that a request to delete a §1(b) basis from a multi-basis application be filed through TEAS, at http://www.uspto.gov/teas/index.html.

806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance

If an application is based on §1(b) in addition to another basis, the applicant may file a request to delete the §1(b) basis by amendment at any time. 37 C.F.R. 2.35(b)(1). No petition is required to delete the §1(b) basis after publication. To expedite processing, the Office recommends that any request to delete a §1(b) basis be filed through TEAS, at http://www.uspto.gov/teas/index.html.

If a notice of allowance has issued, the request must be filed within six months of the mailing date of the notice of allowance, or within a previously-granted extension of time to file a statement of use. 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 issue the registration.

If filed on paper before issuance of the notice of allowance, the request should be directed to the Photocomposition Coordinators in the Publication and Issue Section of the Office. They will delete the §1(b) basis, and issue the registration.

806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis

If an applicant properly claims a §44(d) basis 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 Office does not delete the §44(d) filing basis from the TRAM database. Both the §44(d) filing basis and the other basis will remain in the TRAM 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 Office 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 USPTO.

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 should ensure that the priority claim is deleted from the TRAM database, and should conduct a new search of Office records for conflicting marks.