TMEP 1505.02(f): Amendment of the Basis

October 2017 Edition of the TMEP

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1505.02(f)    Amendment of the Basis

In an application that is not the subject of an inter partes proceeding before the Board, if an applicant wants to add or substitute a basis after publication, the applicant must 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); TMEP §806.03(j).  See TMEP §806.03 regarding amending the basis generally and 37 C.F.R. §2.133(a) and TBMP §514  regarding amending the basis of an application that is the subject of an inter partes proceeding before the Board.

In a §66(a) application, the applicant may not change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a).  See TMEP §§1904.09 et seq. regarding transformation.

In a multiple-basis application, the applicant may delete a basis at any time prior to registration. 37 C.F.R. §2.35(b)(1).  No petition is required.  See TMEP §806.04(a) regarding the deletion of a §1(b) basis after publication or issuance of the notice of allowance.