TMEP 806.03(j)(iii): Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration

This is the October 2015 Edition of the TMEP

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806.03(j)(iii)    Amending the Basis of a §1(b) Application After Filing of Statement of Use But Before Approval for Registration

An applicant who wants to add or substitute a §44(e) basis after filing a statement of use must petition the Director to allow the examining attorney to consider the amendment. The applicant must submit a copy of the foreign registration (and an English translation, if necessary) with the petition. See 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).

While an applicant may not withdraw the statement of use (37 C.F.R. §2.88(f); TMEP §1109.17), the applicant may elect not to perfect the use basis and instead substitute §44(e). The statement of use, specimen(s), and any materials submitted with the statement of use will remain part of the record even if the §1(b) basis is deleted. See 37 C.F.R. §2.25.

If the examining attorney accepts the §44(e) basis and the applicant is not perfecting the statement of use, the examining attorney must ensure that: (a) the §1(b) basis is deleted, (b) the dates of use are deleted, (c) the foreign registration information is entered into the Trademark database, and (d) the mark is scheduled for republication. If 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) and address any additional issue(s) that arise during examination of the statement of use. If an Office action has already been issued, the examining attorney must issue a supplemental action, with a new six-month response period, notifying the applicant that the §44 basis is unacceptable. The examining attorney must indicate that the action is supplemental to the previous action and incorporate all outstanding issues by reference to the previous action. The applicant may choose to withdraw the request to amend the §44(e) basis.

Filing a petition to add or substitute a §44(e) basis does not relieve the applicant of the duty to file a response to an outstanding Office action or to take any other action required in an application. See TMEP §§711–711.02 regarding the deadline for response to an Office action. If the applicant has filed a petition to delete the §1(b) basis and substitute §44(e), but the petition has not yet been acted on, the applicant may respond to an outstanding refusal or requirement by informing the examining attorney that a petition has been filed to substitute §44(e). The applicant must also respond to any outstanding issues regarding the statement of use unless the applicant no longer intends to perfect the statement of use.