TMEP 806.03(d): Amendment From §44 to §1(b)

October 2017 Edition of the TMEP

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806.03(d)    Amendment From §44 to §1(b)

An applicant may amend the basis from §44 to §1(b).  The USPTO will presume that the applicant had a continuing valid basis, unless there is contradictory evidence in the record, because the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3). Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1789-90 (TTAB 2006).  It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).

Applicant must clearly indicate whether it wants to: (1) add the §1(b) basis and maintain the §44 basis; or (2) replace the §44 basis with the §1(b) basis.

In a §44(d) application, the applicant may substitute §1(b) as a basis and still retain the priority filing date. 37 C.F.R. §2.35(b)(3), (b)(4); TMEP §806.03(h).  If the applicant chooses to add the §1(b) basis and maintain the §44 basis, the examining attorney must not approve the mark for publication until the applicant files a copy of the foreign registration. See TMEP §§806.02(f), 1003.04(b).

See TMEP §806.03(j) regarding amendment of the basis after publication.