TMEP 806.04(a): Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance

This is the October 2015 Edition of the TMEP

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806.04(a)    Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance

If all of the goods/services/classes in an application are based on §1(b) and §44(e), the applicant may file a request to delete the §1(b) basis by amendment at any time, except as set forth below. 37 C.F.R. §2.35(b)(1). No petition to the Director is required to delete a §1(b) basis from a multiple-basis application after publication. To expedite processing, the USPTO recommends that any request to delete a §1(b) basis be filed through TEAS, at http://www.uspto.gov/trademarks/teas/post_publication.jsp, using the “Request to Delete §1(b) Basis, Intent-to-Use” form.

If the application has some goods/services/classes based solely on §1(b) and some goods/services/classes based solely on §1(a) or §44(e), and the applicant wants to delete the §1(b) goods/services/classes after publication or issuance of the notice of allowance, the applicant must submit a post-publication amendment requesting the deletion and that the application proceed to registration for the other goods/services/classes that are not based on §1(b). To expedite processing, the USPTO recommends that any request to delete the §1(b) goods/services/classes be filed through TEAS, at http://www.uspto.gov/trademarks/teas/post_publication.jsp, using the “Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment” form. For further information on filing post-publication amendments, see TMEP §1505.

If a notice of allowance has issued, the request must be filed: (1) within six months of the issuance date of the notice of allowance, (2) within a previously granted extension of time to file a statement of use, or (3) between the filing date of the statement of use and the date on which the examining attorney approves the mark for registration. If filed on paper, the request should be directed to the ITU Unit. The ITU Unit will cancel the notice of allowance, and take the necessary steps to delete the §1(b) basis and schedule the issuance of the registration.

If filed on paper before issuance of the notice of allowance, the request should be faxed to Post Publication Amendments/Corrections at 571-270-9007. The request will be reviewed by paralegal specialists in the Office of Petitions, who will delete the §1(b) basis and schedule the issuance of the registration.