Under 15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3), the requirements for establishing a basis for registration of a trademark or service mark under §44(e), relying on a registration granted by the applicant’s country of origin, are:
If the applicant does not submit a certification or a certified copy of the registration from the country of origin, the applicant must submit a true copy or photocopy of a document that has been issued to the applicant by, or certified by, the intellectual property office in the applicant’s country of origin. A photocopy of an entry in the intellectual property office’s gazette (or other official publication) or a printout from the intellectual property office’s website is not, by itself, sufficient to establish that the mark has been registered in that country and that the registration is in full force and effect. See TMEP §1004.01.
The scope of the goods/services covered by the §44 basis in the U.S. application may not exceed the scope of the goods/services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §1402.01(b).
An application may be based on more than one foreign registration. If the applicant amends an application to rely on a different foreign registration, this is not considered a change in basis; however, the application must be republished. TMEP §1004.02. See TMEP §§806.03–806.03(l) regarding amendments to add or substitute a basis.
See TMEP §1303.01(a)(iv), §1304.02(a)(iv), §1306.02(a)(iv)-(a)(iv)(A) for a list of the requirements for a §44(e) basis for collective and certification mark applications.
See also TMEP §§1004–1004.02 for further information about §44(e) applications.
Section 66(a) of the Act, 15 U.S.C. §1141f(a), provides for a request for extension of protection of an international registration to the United States. See 37 C.F.R. §2.34(a)(5). The request must include a verified statement alleging that the applicant/holder has a bona fide intention to use the mark in commerce that the U.S. Congress can regulate on or in connection with the goods or services specified in the international application/subsequent designation, which is verified by the applicant for, or holder of, the international registration. 37 C.F.R. §§2.33(a),(e)(1), 2.193(e)(1). The verified statement is part of the international registration on file at the IB, for a trademark or service mark application. 37 C.F.R. §2.33(e). The IB will have established that the international registration includes this declaration before it sends the request for extension of protection to the USPTO. Generally, the examining attorney need not review the international registration to determine whether there is a proper declaration of intent to use, or issue any inquiry regarding the initial verification of the application. However, if the applicant voluntarily files a substitute declaration with the USPTO, it will be examined according to the same standards used for examining any other declaration. See TMEP §804.05.
For a collective mark or certification mark application, the required verified statement is not part of the international registration on file at IB; therefore, the examining attorney must require the verified statement during examination. See 37 C.F.R. §§2.44(b)(2), 2.45(b)(2). See TMEP §§1303.01(a)(v), 1303.01(b)(ii), 1304.02(a)(v), 1304.02(b)(ii), 1306.02(a)(v), and 1306.02(b)(ii) for information regarding the verified statement for collective and certification mark applications based on §66(a).
A §66(a) applicant may not change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c). 37 C.F.R. §§2.34(b), 2.35(a). See TMEP §1904.09 regarding the limited circumstances under which a §66(a) application can be transformed into an application under §1 or §44.
Section 66(a) requires transmission of a request for extension of protection by the IB to the USPTO. Such basis may not be added or substituted as a basis in an application originally filed under §1 or §44.
Under 15 U.S.C. §1141g, Madrid Protocol Article 4(2), and 37 C.F.R. §7.27, the §66(a) applicant may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
See Regs. Rule 9(4)(a)(iv).
In a §66(a) application, the applicant may not claim more than one basis. 37 C.F.R. §2.34(b).
In an application under §1 or §44 of the Trademark Act, the applicant may claim more than one basis, if the applicant satisfies all requirements for each basis claimed. However, the applicant may not claim both §1(a) and §1(b) for identical goods or services in the same application. 37 C.F.R. §2.34(b). The applicant must clearly indicate that more than one basis is claimed, and must separately list each basis, followed by the goods, services, or classes to which that basis applies. If some or all of the goods or services are covered by more than one basis, this must be stated. 37 C.F.R. §§2.34(b), 2.35(b)(6).
Example: Based on use - SHIRTS AND COATS, in Class 25; Based on intent to use - DRESSES, in Class 25.
The applicant may assert different bases for different classes, and may also assert different bases as to different goods or services within a class.
When a single class has different bases for goods or services within that class, the USPTO uses parentheses to indicate the particular basis for specific goods or services. When entering this information into the Trademark database for goods and services under §1(a) or §1(b), the examining attorney or legal instruments examiner ("LIE") must refer to "use in commerce" or "intent to use" rather than referring to the statutory citation. However, for goods and services under §44, the statutory citation must be identified.
Example: Class 025: (Based on Use in Commerce) Pants; (Based on Intent to Use) Shirts
Example: Class 025: (Based on 44(e)) Pants
When all bases do not apply to all classes in a multiple-basis, multiple-class application, each class must include a basis notation.
Example:
Class 016: (Based on 44(e)) Printed greeting cards and printed postcards
Class 025: (Based on Use in Commerce) Shoes; (Based on Intent to Use) Shirts
Class 041: (Based on 44(e)) Entertainment, namely, live performances by a musical band
Exception: If an application has only §1(a) and §1(b) bases, and each class within the application has either a §1(a) or §1(b) basis (i.e., there are no dual bases within any class), basis notations are not required.
The applicant may claim a §44 basis in addition to either a §1(a) or a §1(b) basis for the same goods or services. When an application has a §44 and §1(b) dual basis for the same goods or services, the §1(b) basis notation must always appear after the §44 basis notation. Further, when only some of the goods/services in a class share a dual basis under §44 and §1(b), the basis notation must appear with respect to those goods/services that share the dual bases and those that do not.
Example: Class 005: (Based on 44(e)) (Based on Intent to Use) Gene therapy products, namely, pharmaceutical preparation vectors for use in gene therapy; (Based on Intent to Use) Pharmaceutical preparations containing nucleic acids for use in the treatment of viral and bacterial infections
An applicant may rely on both §1(a) and §1(b) of the Trademark Act in the same trademark or service mark application, but not for identical goods or services. 37 C.F.R. §§2.34(b); 2.86(c). However, the applicant may assert a §1(a) basis for some of the goods or services and a §1(b) basis for other goods or services in the same application. This may occur in either a single or multiple-class application. 37 C.F.R. §2.34(b).
When the applicant asserts both §1(a) and §1(b) as bases for registration in the same application, the USPTO will publish the mark for opposition and then issue a notice of allowance (see TMEP §1106.01) if there is no successful opposition. The goods/services/classes for which a §1(a) basis is asserted will remain in the application pending the filing and approval of a statement of use for the goods/services/classes based on §1(b), unless the applicant files a request to divide. See TMEP §§1110–1110.11(a) regarding requests to divide applications. If the applicant fails to timely file a statement of use or request for an extension of time to file a statement of use in response to a notice of allowance, the entire application will be abandoned, unless the applicant files a request to divide before the expiration of the deadline for filing the statement of use and notifies the examining attorney that the request has been filed. TMEP §806.02(d).
If the applicant claims use in commerce in addition to another basis, but does not specify which goods/services/classes are covered by which basis, the USPTO may defer examination of the specimens until the applicant identifies the goods/services/classes for which use is claimed. A proper examination of specimens requires consideration of the particular goods/services on or in connection with which the mark is used.
In general, an application becomes abandoned if the applicant fails to take required action during the relevant statutory period. 15 U.S.C. §§1051(d)(4), 1062(b)(2), 37 C.F.R. §2.65(a), (c). In certain situations, if all refusals and/or requirements are expressly limited to certain goods/services, and the applicant fails to respond, or to respond completely, to an Office action, the application will be abandoned only as to those particular goods/services. See TMEP §718.02(a). However, if an application has multiple bases, it is not always appropriate to issue a partial-abandonment advisory because the USPTO will not abandon one of the bases in an application for failure to respond to an Office action. The applicant must submit an amendment deleting the basis or a request to divide, if appropriate. The following sections discuss when it is and is not appropriate to issue a partial-abandonment advisory in a multiple-basis application.
When an applicant fails to respond to an Office action in which a refusal or requirement was specifically limited to particular goods/services/classes, the examining attorney will abandon the application in part as to the particular goods/services/classes to which the refusal or requirement is limited. To the extent those goods/services/classes are the only goods/services/classes supported by one basis of multiple filing bases, the filing basis corresponding to such goods/services/classes will also be deleted from the application.
Example: An application includes "pants" (based on §1(a)) in Class 25 and "toys" (based on §1(b)) in Class 28. The examining attorney issues an Office action that clearly and explicitly limits a refusal or requirement to Class 28 and includes a partial-abandonment advisory, if otherwise appropriate. If the applicant does not respond, the examining attorney will issue an examiner’s amendment deleting (abandoning) Class 28 and the §1(b) basis. The application will be approved for publication with a basis of §1(a). If no opposition is filed, the application will proceed to issuance of a registration of the mark for "pants."
Example: An application includes "pants" (based on §1(a)) and "shoes" (based on §1(b)) in Class 25. The examining attorney issues an Office action that clearly and explicitly limits a refusal or requirement to the "pants" in Class 25 and includes a partial-abandonment advisory, if otherwise appropriate. If the applicant does not respond, the examining attorney will issue an examiner’s amendment deleting (abandoning) "pants" and the §1(a) basis. The application will be approved for publication with a basis of §1(b). If no opposition is filed, a notice of allowance for "shoes" will be issued.
See TMEP §718.02(a) regarding failure to respond to a partial refusal or requirement.
However, if the different bases apply to all goods/services within a class or to all classes, a partial-abandonment advisory must not be given. The failure to respond will result in abandonment of the entire application.
Example: An application includes "shoes and shirts" (based on §44(e) and §1(b)) in Class 25, but the foreign registration does not cover "shoes." When issuing a refusal of the §44(e) basis for "shoes," the examining attorney must not include a partial-abandonment advisory. The applicant must submit an amendment specifically deleting the §44(e) basis if it wishes to go forward under the §1(b) basis alone.
Example: An application includes "shoes and shirts" in Class 25 and "dolls" in Class 28. Both classes are based on §44(e) and §1(a). If a refusal must be issued regarding the specimen of use for Class 28, the examining attorney must not include a partial-abandonment advisory. The applicant must submit an amendment specifically deleting the §1(a) basis as to Class 28 if it wishes to go forward under the §44(e) basis alone.
If the failure to respond to the Office action was unintentional, the applicant may file a petition to revive. See TMEP §§1714–1714.01(g) regarding petitions to revive.
If an applicant fails to respond to a notice of allowance that applies to some or all of the goods and/or services in a multiple-basis application, the failure to respond will result in abandonment of the entire application. The USPTO will not partially abandon the goods/services to which the §1(b) basis applies, nor will it abandon the §1(b) basis as it applies to any or all goods/services in the application. If the failure to respond was unintentional, the applicant may file a petition to revive. See TMEP §§1714–1714.01(g) regarding petitions to revive.
Any application filed under §44(d) or §44(e) must include a verified statement that the applicant has a bona fide intention to use the mark in commerce even if §1(a) (use in commerce) is asserted as an additional filing basis. Cf. In re Paul Wurth S.A., 21 USPQ2d 1631, 1633 (Comm’r Pats. 1991).
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce.
If an applicant properly claims priority under §44(d), 15 U.S.C. §1126(d), in addition to a §1 basis, the applicant may elect not to perfect the §44(e) basis (based on the foreign registration that will issue from the application on which the applicant relies for priority) and still retain the priority filing date. 37 C.F.R. §2.35(b)(3), (b)(4). If an applicant who elects not to perfect the §44(e) basis later wishes to add or substitute §44(e) as a basis after the 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); see TMEP §806.03(j).
The examining attorney must advise the applicant that it may retain the priority filing date even if it does not perfect the §44(e) basis, and inquire whether the applicant wishes to retain §44(e) as a second basis for registration. See TMEP §806.04(b) regarding the processing of an application in which an applicant elects not to perfect a §44(e) basis, and TMEP §1003.04(b) regarding the procedures to follow when an applicant claims priority under §44(d) in addition to another basis.
If an application is based on both §1(b) and §44, it is not necessary to repeat the allegation that the applicant has a bona fide intention to use the mark in commerce. Therefore, when an applicant adds or substitutes §1(b) or §44 as a filing basis, it is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if there is already one in the record with respect to the goods or services covered by the new basis.
Section 1 or §44 Application- Before Publication. The applicant may add or substitute a basis before publication, provided that the applicant meets all requirements for the new basis. 37 C.F.R. §2.35(b)(1).
Section 1 or §44 Application- After Publication. 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 first petition the Director to allow the examining attorney to consider the amendment. If the Director grants the petition, and the examining attorney accepts the added or substituted basis, the mark must be republished. 37 C.F.R. §2.35(b)(2). See TMEP §§806.03(j)–(j)(iii) for further information.
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 Trademark Trial and Appeal Board Manual of Procedure (TBMP) §514.
Section 66(a) Application. In a §66(a) application, the applicant cannot change the basis, unless the applicant meets the requirements for transformation under §70(c) of the Trademark Act, 15 U.S.C. §1141j(c), and 37 C.F.R. §7.31. 37 C.F.R. §2.35(a); TMEP §806.03(k).
An applicant may add or substitute a §44(d) basis only during the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.02(f) regarding §44(d) combined with another basis.
In an application filed under §1(a), if the §1(a) basis fails, either because the specimens are unacceptable or because the mark was not in use in commerce when the application was filed, the applicant may substitute §1(b) as a basis and the application will retain the original filing date. The USPTO will presume that the applicant had a continuing valid basis unless there is contradictory evidence in the record. 37 C.F.R. §2.35(b)(3).
Although there is a presumption of a continuing valid basis, when amending from §1(a) to §1(b) in a trademark or service mark application, the applicant must confirm the presumption by submitting a verified statement that the applicant has a bona fide intention to use the mark in commerce, and that the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2). See TMEP §§1303.01(b)(i), 1304.02(b)(i), and 1306.02(b)(i) for the verified statement for a §1(b) application for collective and certification marks.
If the applicant wishes to substitute §1(b) as a basis after publication of an application filed under §1(a) that is not the subject of an inter partes proceeding before the TTAB, the applicant must petition the Director to allow the examining attorney to consider the amendment. 37 C.F.R. §2.35(b)(2). In a multiple-basis application, if a notice of allowance has issued for those goods/services/classes based on §1(b), the petition will not be granted unless a request to divide the application is submitted with the petition. The goods/services/classes to be amended from §1(a) to §1(b) must be divided out in order to process the amendment because republication is required. 37 C.F.R. §2.35(b)(2). The petitioner may include all the goods/services/classes based on §1(a) in the child application or only those to which the amendment to §1(b) applies. If dividing within a class, in addition to the fee for filing a request to divide, an application filing fee is required. See 37 C.F.R. §2.87 and TMEP §§1110–1110.11(a) regarding requests to divide applications.
The amendment of an application that is the subject of an inter partes proceeding before the TTAB is governed by 37 C.F.R. §2.133(a).
Note that in a §1(b) application, once an applicant has filed a statement of use, the applicant may not withdraw the statement of use. 37 C.F.R. §2.88(f); TMEP §1109.17. Thus, an applicant may not amend the basis from §1(a) to §1(b) after a statement of use has been filed. See TMEP § 1104.11 regarding withdrawing an amendment to allege use.
See TMEP §§806.03(j)–806.03(j)(iii) regarding amendment of the basis after publication.
An applicant may amend the basis from §44 to §1(b). The USPTO will presume that the applicant had a continuing valid basis, unless there is contradictory evidence in the record, because the applicant had a bona fide intention to use the mark in commerce as of the application filing date. 37 C.F.R. §2.35(b)(3). Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1789-90 (TTAB 2006) . It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such a verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).
Applicant must clearly indicate whether it wants to: (1) add the §1(b) basis and maintain the §44 basis; or (2) replace the §44 basis with the §1(b) basis.
In a §44(d) application, the applicant may substitute §1(b) as a basis and still retain the priority filing date. 37 C.F.R. §2.35(b)(3), (b)(4); TMEP §806.03(h). If the applicant chooses to add the §1(b) basis and maintain the §44 basis, the examining attorney must not approve the mark for publication until the applicant files a copy of the foreign registration. See TMEP §§806.02(f), 1003.04(b).
See TMEP §806.03(j) regarding amendment of the basis after publication.
An applicant who claims a §1(b) basis for any or all of the goods or services may not amend the application to seek registration under §1(a) of the Act for those goods or services, unless the applicant files an allegation of use. 37 C.F.R. §2.35(b)(8). See TMEP §§1103, 1104–1104.11, and 1109–1109.18 regarding allegations of use.
An applicant may add or substitute a basis only if the applicant meets all the requirements for the new basis. 37 C.F.R. §2.35(b)(1). Therefore, an applicant may not amend a §44 application to claim a §1(a) basis unless the applicant: (1) verifies that the mark is in use in commerce and was in use in commerce as of the application filing date; (2) provides a specimen, with a verified statement that the specimen was in use in commerce as of the application filing date; and (3) supplies the date of first use anywhere and the date of first use in commerce of the mark. 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.71(c)(1); TMEP §§806.01(a), 806.03(i), 903.01, 903.02, 903.04, 904.05.
If an applicant began using the mark in commerce after the application filing date, the applicant may not add or substitute §1(a) as a basis. However, the applicant may add or substitute §1(b) as a basis, and concurrently file an amendment to allege use. See TMEP §806.03(d) regarding amendment of the basis from §44 to §1(b), and TMEP §§1104–1104.11 regarding amendments to allege use.
An applicant may amend the basis from §1(b) to §44, if the applicant meets the requirements of §44 as of the filing date of the amendment. It is not necessary to submit a new verification of the applicant’s bona fide intention to use the mark in commerce if such verification is already in the record with respect to the goods/services covered by the new basis. See TMEP §806.03(i).
When an applicant adds §44(e) as a basis, the applicant must submit a copy of the foreign registration (and an English translation, if necessary) with the amendment. 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004.01, 1004.01(b).
The applicant may add a claim of priority under §44(d) only within the six-month priority period following the filing date of the foreign application. 37 C.F.R. §2.35(b)(5). See TMEP §806.02(f) regarding §44(d) combined with another basis.
If the amendment is filed before publication, the applicant must clearly indicate whether it wants to: (1) add the §44 basis and maintain the §1(b) basis; or (2) replace the §1(b) basis with the §44 basis. If the applicant chooses to add §44 and maintain the §1(b) basis, the application will proceed to publication with a dual basis. See TMEP §§806.03(j)–806.03(j)(iii) regarding amendment of the basis after publication.
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.
An applicant who adds or substitutes use in commerce under §1(a) as a basis in a trademark or service mark application must verify that the mark is in use in commerce on or in connection with the goods/services covered by the §1(a) basis, and that the mark was in use in commerce on or in connection with these goods/services as of the application filing date. See 37 C.F.R. §§2.2(k)(1), 2.34(a)(1)(i), 2.35(b)(1). See TMEP §1303.01(b)(i), §1304.02(b)(i), and §1306.02(b)(i) for the verification wording for a §1(a) basis for a collective or certification mark application.
An applicant who adds or substitutes §1(b), §44(d), or §44(e) as a basis in a trademark or service mark application must verify that the applicant has a bona fide intention to use the mark in commerce on or in connection with the goods/services covered by the amendment, and that the applicant had a bona fide intention to use the mark in commerce on or in connection with these goods/services as of the application filing date, unless a verified statement of the applicant’s bona fide intention to use the mark in commerce has already been filed with respect to all the goods/services covered by the new basis. See 37 C.F.R. §§2.2(l), 2.34(a)(2), (a)(3)(i), (a)(4)(ii), 2.35(b)(1). See TMEP §1303.01(b)(i), §1304.02(b)(i), and §1306.02(b)(i) for the verification wording for a §1(b), §44(d), or §44(e) basis for a collective or certification mark application.
Example: If a §44 application originally included a verified statement that the applicant had a bona fide intention to use the mark in commerce, it is not necessary to repeat this statement if the applicant later adds or substitutes a §1(b) basis for the goods/services covered by the §44 basis.
See TMEP §804.04 regarding persons who may sign a verification on behalf of an applicant under 37 C.F.R. §2.193(e)(1).
