TMEP 1003.04(b): Multiple-Basis Applications

October 2017 Edition of the TMEP

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1003.04(b)    Multiple-Basis Applications

If an applicant properly claims §44(d) as a basis for receipt of a priority filing date and asserts §1 as a second basis, the applicant may elect not to perfect the §44 basis and still retain the priority filing date. 37 C.F.R. §2.35(b)(3)-(4). If the application is filed via TEAS and indicates that the applicant is relying on §44(e) as a basis for registration, the examining attorney must follow the procedures in TMEP §1003.04(a) with respect to the §44(e) basis. If the application indicates that the applicant is not relying on §44(e) as an additional basis for registration and is only asserting §44(d) to receive a priority filing date, the examining attorney must ensure that the Trademark database is updated accordingly. See TMEP §§806.02(f) and 806.03(j) regarding the addition or substitution of a §44(e) a basis after a mark has been published for opposition.

When an application filed on paper is silent as to whether the applicant intends to rely on §44(e) as an additional basis for registration, the examining attorney must inquire as to whether the applicant intends to rely on the §44(e) basis. If, on initial examination, there are no refusals or requirements that would otherwise necessitate issuance of an Office action, this inquiry may be made via telephone or e-mail, if e-mail communication is authorized.  If the applicant intends to perfect the §44 basis, the examining attorney must enter a Note to the File in the record and suspend the application pending receipt of the foreign registration.  If the applicant does not wish to perfect the §44 basis, the examining attorney must issue an examiner’s amendment to this effect.  If the applicant cannot be reached by telephone or e-mail, the examining attorney must enter a Note to the File in the record indicating the unsuccessful attempt to contact the applicant and suspend action on the application pending receipt of the foreign registration. The suspension notice must include a search clause (see TMEP §704.02).

If the application was filed on paper and it is necessary to issue an Office action regarding any refusals or requirements, including a prior pending application, the examining attorney must inquire as to whether the applicant intends to perfect §44 as a second basis for registration and note that, if so, the foreign registration is required when it becomes available. If the response indicates that the applicant is not relying on §44(e) as an additional basis for registration, the examining attorney will approve the application for publication or allowance on the Supplemental Register, or will issue a final action, as appropriate. If the response indicates that the applicant intends to rely on §44(e) as a second basis, or fails to indicate whether the applicant intends to perfect the §44 basis, the examining attorney will suspend further action pending submission of the foreign registration and, if appropriate, resolution of the prior pending application. In the notice of suspension, the examining attorney must reference any refusals or requirements that are continued. See TMEP §716.01.

See TMEP §1003.04(a) with respect to suspension procedures when there is a prior pending application.