TMEP 806.03(j): Petition to Amend Basis After Publication - §1 or §44 Application

This is the October 2015 Edition of the TMEP

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806.03(j)    Petition to Amend Basis After Publication - §1 or §44 Application

37 C.F.R. §2.35(b)(2)

After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, but only with the express permission of the Director, after consideration on petition. Republication will be required. The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by §2.133(a).

In an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board, if an applicant wants to add or substitute a basis after a mark has been published for opposition, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). Amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by 37 C.F.R. §2.133(a) (see TBMP §514).

When granting a petition to amend the basis, the Director will restore jurisdiction to the examining attorney to consider the amendment, except in a §1(b) application in which the notice of allowance has issued. See TMEP §806.03(j)(ii) regarding amendment of the basis of a §1(b) application after issuance of a notice of allowance and before filing of statement of use.

If the examining attorney accepts the new basis, the mark must be republished to provide notice to third parties who may wish to oppose registration based on issues that arise in connection with the new basis. 37 C.F.R. §2.35(b)(2).

If the examining attorney does not accept the new basis, he or she will issue an Office action using standard examination procedures except in a §1(b) application in which a notice of allowance has issued and no statement of use has been filed. See TMEP §806.03(j)(ii) regarding amendment of the basis of a §1(b) application after issuance of a notice of allowance and before filing of statement of use.   

Any petition to change the basis must be filed before issuance of the registration. To avoid the possible issuance of a registration without consideration of the petition, an applicant should submit the petition no later than six weeks after publication.

The Director will not grant a petition to amend the basis after publication if the amendment could substantially delay prosecution of the application. For example, the Director will deny petitions to amend the basis after publication in the following situations:

  • Once the Director has granted a petition to amend the basis after publication, the Director will not thereafter grant a second petition to amend the basis with respect to the same application.
  • If an applicant had previously deleted a §1(b) basis after a notice of allowance had issued, the Director will not grant a petition to re-assert §1(b) as a basis for registration. This would require issuance of a new notice of allowance and could result in filing of a statement of use more than 36 months after issuance of the first notice of allowance, which is not permitted under §1(d) of the Act, 15 U.S.C. §1051(d).

See TMEP §806.03(j)(i) regarding amendment of the basis in a §1(b) application between publication and issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendment of the basis in a §1(b) application after issuance of a notice of allowance and before filing of statement of use.

Petitions to amend the basis after publication are processed by the Office of Petitions, which is part of the Office of the Deputy Commissioner for Trademark Examination Policy.