TMEP 1904.09(b): Examination of Transformed Application

This is the October 2015 Edition of the TMEP

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1904.09(b)    Examination of Transformed Application

A “transformed” application under §1 or §44 of the Trademark Act resulting from the transformation of a cancelled extension of protection must comply with all the requirements of the Trademark Act and Trademark Rules of Practice. 37 C.F.R. §7.31(c). The USPTO will assign a new serial number, and will link the prosecution history of the cancelled extension of protection to the new “transformed” application. A notation of the serial number to which the cancelled extension of protection is transformed appears in the electronic record of the cancelled extension of protection, under “Other Information” in the Trademark database (in the “Transformed To” field). Similarly, a notation of the serial number of the cancelled request for extension of protection appears in the Trademark database for the new transformed application (in the “Transformed From” field).

The “transformed” application will have the same filing date as the cancelled extension of protection, that is: (1) the international registration date, if the request for extension of protection to the United States was made in the international application; or (2) the date of recordal of the subsequent designation with the IB, if the request for extension of protection to the United States was made in a subsequent designation. If the extension of protection was entitled to priority under §67 of the Trademark Act, 15 U.S.C. §1141g, the new application is entitled to the same priority.

When a cancelled extension of protection is transformed into a new application under §1 or §44, the examining attorney must conduct a new search to determine whether any later-filed applications for conflicting marks were approved for publication or registration and place the search strategy in the record. The examining attorney must also require the applicant to submit a verified statement in support of the application that relates back to the filing date of the transformed application. See TMEP §804.02 regarding the essential allegations required to verify an application for registration of a mark under §1 or §44, and TMEP §804.04 regarding persons properly authorized to sign a verification on behalf of an applicant.

If it is unclear from the transformation request, the examining attorney must require the holder to clarify the goods/services to be transformed, if other than all the goods/services that were covered by the cancelled extension of protection. 37 C.F.R. §7.31(a)(3).

Even if the mark in the extension of protection was already published or registered, republication will be required, due to the substitution of a new basis for registration. 37 C.F.R. §2.35(b)(2).

Generally, in examining a “transformed” application where the extension of protection was published or registered, the USPTO will only issue requirements or refusals related to the new §1 or §44 basis. However, in some cases, where a significant length of time has elapsed since the initial examination of the request for extension of protection, refusal of registration may be appropriate due to changed circumstances. For example, the mark may have become descriptive or generic as applied to the goods/services.