TMEP 1107: Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use
October 2017 Edition of the TMEP
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1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use
Generally, the only amendments that may be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are: (1) the deletion of specified goods or services, or the entire description of the nature of the collective membership organization, from the identification; (2) the deletion of a basis in a multiple-basis application; and (3) changes of attorney and changes of address. See 37 C.F.R. §2.77(a).
The "deletion of specified goods or services, or the entire description of the nature of the collective membership organization," within the meaning of 37 C.F.R. §2.77(a)(1), means the elimination of an existing entry in an identification in its entirety. Deletion is distinct from other types of amendments to modify or limit an identification, such as amendments to limit the goods/services as to types, channels of trade or classes of purchasers, or to restrict an existing item in scope by the introduction of some qualifying language, or the substitution of specific terms for more general terms.
Although 37 C.F.R. §2.77(a)(2) permits the deletion of a basis in a multiple-basis application after issuance of the notice of allowance, an applicant cannot delete a §1(b) basis if the only other basis is §44(d). Section 44(d) of the Trademark Act provides only a basis for receipt of a priority filing date, not a basis for publication or registration. See TMEP §1003.03. In such situations, the applicant may request deletion of the §1(b) basis only by filing a petition to allow consideration of an amendment to a §44(e) filing basis. 37 C.F.R. §2.35(b)(2). The request must be filed as a "Petition to Change the Filing Basis After Publication" and the Office encourages such submissions be filed on the appropriate TEAS form. See TMEP 806.03(j)(ii).
The USPTO will enter other amendments during this period only with the express permission of the Director, after consideration on petition under 37 C.F.R. §2.146. If the Director determines that the amendment requires review by the examining attorney, the petition will be denied and the amendment may be resubmitted with the statement of use in order for the applicant to preserve its right to review. 37 C.F.R. §2.77(b); TMEP §1107.01. The petition must be accompanied by the fee required by 37 C.F.R. §2.6. See TMEP Chapter 1700 regarding petitions.
The filing of an amendment after issuance of the notice of allowance does not extend the deadline for filing a statement of use or request for an extension of time to file a statement of use.
See TMEP §1106.04 regarding correction of errors in a notice of allowance, TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendments to add or substitute a basis between issuance of the notice of allowance and filing the statement of use.