TMEP 806.03(j)(i): Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance

This is the October 2015 Edition of the TMEP

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806.03(j)(i)    Amending the Basis of a §1(b) Application After Publication But Before Issuance of Notice of Allowance

An applicant who wants to add or substitute a §44(e) basis to a §1(b) application after publication must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2); TMEP §806.03(j). The applicant must submit a copy of the foreign registration (and an English translation, if necessary) with the petition. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§ 1004.01, 1004.01(b). If the petition is granted, the mark must be republished. 37 C.F.R. §2.35(b)(2); TMEP § 806.03(j).

The petition must indicate whether applicant wants to delete or retain the §1(b) basis. The applicant has two options:

  • (1) Applicant may request to delete the §1(b) basis and substitute §44(e) if the examining attorney accepts the §44(e) basis. If the petition is granted, the examining attorney will be instructed to examine the §44(e) basis in accordance with standard examination procedures and to delete the §1(b) basis if the §44(e) basis is accepted. If the examining attorney accepts the §44(e) basis, the examining attorney must ensure that: (a) the §1(b) basis is deleted, (b) the foreign registration information is entered into the Trademark database, and (c) the application is scheduled for republication. If registration of the mark is not successfully opposed, a registration will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment adding the §44(e) basis and proceed under §1(b) as the sole basis without republication; or
  • (2) Applicant may request to add §44(e) and retain the §1(b) basis. If the petition is granted, the examining attorney will be instructed to examine the §44(e) basis in accordance with standard examination procedures. If the examining attorney accepts the §44(e) basis, the examining attorney must ensure that: (a) the foreign registration information is entered into the Trademark database and (b) the application is scheduled for republication with a dual basis. If registration of the mark is not successfully opposed, a notice of allowance will issue. If the examining attorney does not accept the §44(e) basis, the examining attorney will issue an Office action notifying the applicant of the reason(s). The applicant may elect to withdraw the amendment adding the §44(e) basis and proceed under §1(b) as the sole basis without republication.