Petition to Director Granted

United States Patent and Trademark Office (USPTO)

PETITION TO DIRECTOR GRANTED

Issue date:  December 23, 2020

A petition to the Director of the United States Patent and Trademark Office (USPTO) for consideration of an amendment changing the basis for registration of the above identified trademark was received on September 18, 2020.  The petition is granted.  37 C.F.R. §2.146(a)(3).

Facts

The application was filed on October 15, 2018, based upon applicant’s bona fide intention to use the mark in commerce.  15 U.S.C. §1051(b).  The mark was published for opposition on April 21, 2020, and a notice of allowance (NOA) issued on June 16, 2020.  Petitioner has filed one request for extension of time to file a statement of use (extension request) through June 16, 2021.  See 15 U.S.C. §1051(d)(2); 37 C.F.R. §2.89(c); Trademark Manual of Examining Procedure (TMEP) §1108. 

This petition was filed on September 18, 2020.  The petition requests that the basis of the application be amended to Section 44(e) of the Trademark Act.  15 U.S.C. §1126(e).   The petition further requests that the Section 1(b) basis be maintained pending a decision on the amendment to Section 44(e) by the examining attorney.

Decision

An applicant may request post-publication amendments adding or substituting a new statutory basis for registration by filing a petition pursuant to Trademark Rule 2.146(a)(3).  37 C.F.R. §2.146(a)(3).  See 37 C.F.R. §2.35(b)(2).  If the petition is granted, the application is returned to the examining attorney for examination of the new basis for registration.  TMEP §§1107–1107.01.  If the new basis is accepted, republication for opposition is always required.  37 C.F.R. §2.35(b)(2).  See In re Monte Dei Maschi Di Siena, 34 USPQ2d 1415, 1416 (Comm’r Pats. 1995).

It is noted that petitioner has requested to maintain the Section 1(b) basis pending consideration of the amendment to substitute a Section 44(e) basis.  However, the second extension request or SOU is due no later than June 16, 2021.  15 U.S.C. §1051(d)(4); 37 C.F.R. §§2.65(c), 2.88(k), 2.89(g).  Petitioner is advised that the due date for filing an extension request or SOU may be prior to the examination of the amendment to add a Section 44(e) basis.  Therefore, petitioner must file either an extension request or SOU on or before June 16, 2021, the end of the statutory period for filing the SOU.  Failure to do so could result in the abandonment of the application if the requested change to the basis is not completed before the end of the statutory period.  TMEP §806.03(j)(ii).

The petition is granted.  The application will be returned to the examining attorney to examine the amendment to the basis, in accordance with the procedures set forth in TMEP §§1107–1107.01.  If the Section 44(e) basis is acceptable, the examining attorney will delete the Section 1(b) basis and republish the mark for opposition.

/Deborah D Mays/

Paralegal Specialist

Office of the Deputy Commissioner

for Trademark Examination Policy

(571) 272 9575