TMEP 806.03(h): Effect of Substitution of Basis on Application Filing Date

This is the October 2015 Edition of the TMEP

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806.03(h)    Effect of Substitution of Basis on Application Filing Date

When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis. The applicant will retain the original filing date, provided that the applicant had a continuing valid basis for registration since the application filing date. Unless there is contradictory evidence in the record, the USPTO will presume that there was a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3); Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1841 (TTAB 2009); Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1789-90 (TTAB 2006).

If the applicant properly asserts a claim of priority under §44(d) during the six-month priority period, the applicant will retain the priority filing date, no matter which basis for registration is ultimately established, provided that the applicant had a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 1003, 1003.04(b).

If there is no continuing valid basis, the application is void, and registration will be refused. In this situation, the applicant may not amend the filing date, and the USPTO will not refund the filing fee. See TMEP §205.