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

October 2017 Edition of the TMEP

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

An applicant may amend the basis from §1(b) to §44, if the applicant meets the requirements of §44 as of the filing date of the amendment.  It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).

When an applicant adds §44(e) as a basis, the applicant must submit a copy of the foreign registration (and an English translation, if necessary) with the amendment. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01, 1004.01(b).

The applicant may add a claim of priority under §44(d) only within the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5).  See TMEP §806.02(f) regarding §44(d) combined with another basis.

If the amendment is filed before publication, the applicant must clearly indicate whether it wants to: (1) add the §44 basis and maintain the §1(b) basis; or (2) replace the §1(b) basis with the §44 basis.  If the applicant chooses to add §44 and maintain the §1(b) basis, the application will proceed to publication with a dual basis.  See TMEP §§806.03(j)–806.03(j)(iii) regarding amendment of the basis after publication.