806.02(a) Procedure for Asserting More Than One Basis
In a §66(a) application, the applicant may not claim more than one basis. 37 C.F.R. §2.34(b).
In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfies all requirements for each basis claimed. However, the applicant may not claim both §1(a) and §1(b) for identical goods or services in the same application. 37 C.F.R. §2.34(b). The applicant must clearly indicate that more than one basis is claimed, and must separately list each basis, followed by the goods, services, or classes to which that basis applies. If some or all of the goods or services are covered by more than one basis, this must be stated. 37 C.F.R. §§2.34(b), 2.35(b)(6).
Example: Based on use - SHIRTS AND COATS, in Class 25; Based on intent to use - DRESSES, in Class 25.
The applicant may assert different bases for different classes, and may also assert different bases as to different goods or services within a class.
When a single class has different bases for goods or services within that class, the USPTO uses parentheses to indicate the particular basis for specific goods or services. When entering this information into the Trademark database for goods and services under §1(a) or §1(b), the examining attorney or legal instruments examiner ("LIE") must refer to "use in commerce" or "intent to use" rather than referring to the statutory citation. However, for goods and services under §44, the statutory citation must be identified.
Example: Class 025: (Based on Use in Commerce) Pants; (Based on Intent to Use) Shirts
Example: Class 025: (Based on 44(e)) Pants
When all bases do not apply to all classes in a multiple-basis, multiple-class application, each class must include a basis notation.
Class 016: (Based on 44(e)) Greeting cards and postcards
Class 025: (Based on Use in Commerce) Shoes; (Based on Intent to Use) Shirts
Class 041: (Based on 44(e)) Entertainment, namely, live performances by a musical band
The applicant may claim a §44 basis in addition to either a §1(a) or a §1(b) basis for the same goods or services. When an application has a §44 and §1(b) dual basis for the same goods or services, the §1(b) basis information must always appear after the §44 basis information. Further, when only some of the goods/services in a class share a dual basis under §44 and §1(b), the basis information must appear with respect to those goods/services that share the dual bases and those that do not.
Example: Class 005: (Based on 44(e)) (Based on Intent to Use) Gene therapy products, namely, pharmaceutical preparation vectors for use in gene therapy; (Based on Intent to Use) Pharmaceutical preparations containing nucleic acids for use in the treatment of viral and bacterial infections