806.03(c) Amendment From §1(a) to §1(b)
In an application filed under §1(a), if the §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis and the application will retain the original filing date. The USPTO will presume that the applicant had a continuing valid basis unless there is contradictory evidence in the record. 37 C.F.R. §2.35(b)(3).
Although there is a presumption of a continuing valid basis, when amending from §1(a) to §1(b) in a trademark or service mark application, the applicant must confirm the presumption by submitting a verified statement that the applicant has a bona fide intention to use the mark in commerce, and that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2). See TMEP §§1303.01(b)(i), 1304.02(b)(i), and 1306.02(b)(i) for the verified statement for a §1(b) application for collective and certification marks.
If the applicant wishes to substitute §1(b) as a basis after publication of an application filed under §1(a) that is not the subject of an inter partes proceeding before the TTAB, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). In a multiple-basis application, if a notice of allowance has issued for those goods/services/classes based on §1(b), the petition will not be granted unless a request to divide the application is submitted with the petition. The goods/services/classes to be amended from §1(a) to §1(b) must be divided out in order to process the amendment because republication is required. 37 C.F.R. §2.35(b)(2) ). The petitioner may include all the goods/services/classes based on §1(a) in the child application or only those to which the amendment to §1(b) applies. If dividing within a class, in addition to the fee for filing a request to divide, an application filing fee is required. See 37 C.F.R §2.87 and TMEP §§1110–1110.11(a) regarding requests to divide applications.
The amendment of an application that is the subject of an inter partes proceeding before the TTAB is governed by 37 C.F.R. §2.133(a).
Note that in a §1(b) application, once an applicant has filed a statement of use, the applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17. Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed. See TMEP § 1104.11 regarding withdrawing an amendment to allege use.
See TMEP §§806.03(j)–806.03(j)(iii) regarding amendment of the basis after publication.